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April 30, 2018


In the section by section comparison there are footnotes that say the natural law, phenomenon of nature, and abstract idea exceptions "were first revealed" in Bilski; this is unfortunate and incorrect. From Diamond v Chakrabarty:

This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948); O'Reilly v. Morse, 15 How. 62, 112-121 (1854); Le Roy v. Tatham, 14 How. 156, 175 (1853).

I really like the proposal.

Of course, in the Congressional record, it should (must?) be made clear that this change expressly overrules ALL of the Supreme Court 101 (and pre-101 "related") jurisprudence.

Agree - Congress acted before to rein in the courts on patentable subject matter with the existing Section 101, and the courts never stopped using prior case law to extend the wishy-washy, nebulous and ever-changing eligibility standard in new directions.
I'm still nervous that no act of Congress can get them to stop.
I worry that, were this enacted, next will be endless proceedings to interpret what "as a whole" means.

"... subject only to the exceptions, conditions, and requirements set forth in this Title."

What does this mean vis a vis obviousness-type double-patenting. Is section 121 enough to bring ODP into the category of requirements "in this Title"?

Also, what about improper Markush grouping?

I have invented a new joke. Not only new, it's also non-obvious and useful (laughter is the best medicine). We don't yet have telepathy, so it certainly exists outside the human mind.

I am minded to patent it, just as soon as the IPLAC proposal assumes the force of law. Anybody dispute that?


Both of your questions have nothing to do with Section 101 eligibility.


What is your point?

What is my point? That a claim to a new joke, expressed as a process, ought not to be eligible for a patent but, under the IPLAC proposal, would appear to pass muster.

Max: do not forget (looking at the trees of Supreme Court 101 jurisprudence) the forest of “machine, manufacture, composition of mater, or process.” I suspect you will try to claim your joke s “a method of making people laugh” but then you aren’t claiming the joke, are you?

MaxDrei's attempt shows the "overplay" that so often attends to his views.

He has been "around the block" so many times that he does not recognize just how tiny his block is, nor that the rest of the world (or rather, and more importantly, that the US Sovereign), is simply not like his little block.

Thanks Kevin, and, yes, claim it as "A process....."

Magicians, performers, raconteurs earn their crust, like the peddlers of psycho drugs, by making people feel better. Does it matter, whether the claim is from a pharma firm and directed to a new use of molecule X or from a stage performer, and directed to a "process" of reciting a string of words?

I think it does. But it seems that, for you, it makes no difference. Or do I read you wrong?

MaxDrei - you seem to have already lost your way from the Useful Arts....

...note the inclusion of the word "useful" and please note what that means for the U.S. Sovereign...

The word "useful" would suggest to me the results of the claimed subject matter, the effect achieved by the claimed subject matter. I put it to you, that jokes and happy pills achieve the same (or a comparable) useful effect.

As noted, MaxDrei, your "view" is simply too circumscribed by your travels, and does not come close to the meaning within the U.S. Sovereign.

It's as if you are purposefully trying to not understand....

Interesting. Max you will agree that the joke, both in the creating it and the understanding and appreciation of it, exist only in the human mind (albeit, more than one human mind). So its "existence" outside the human mind is a function of either the spoken word (for the comedian) or perhaps the printed word (for more sophisticated jokesters like PG Wodehouse).

But there is case law saying a signal (for, after all, what is speech except a signal) is not patent eligible, and also law that says merely putting on paper an ineligible abstract idea (E=mc2, for example) isn't eligible either. So I think the joke, or the novel, or the aria, are all outside the scope of patent law for at least these reasons and the IPLAC proposal does not fall on that basis.

And, full disclosure, as of Tuesday evening I am on the IPLAC Board, but all this happened well in advance of my election.

Thanks for the thought - not an unreasonable question to ask, particularly in view of Justice Breyer's continued presence on the bench. I can hear the echoes of one of his hypotheticals in your comment.

Breyer is cringeworthy (jurisdiction stripping, anyone)...

A further rumination...
Section dealing with (read that as overturning) the Oil States case by explicitly noting who an inventor is and that by having been deemed to have passed the legal requirements of examination, that the Inventor’s personal inchoate right has matured into a fully legal personal property right that is expressly not a “Public Right” or “Franchise Right”...

(Congratulations on the election, and in the best Picard tones: “Make it so.”

Good argumentation Kevin. Thinking about it, a computer has no moods, no depression, so is unable to be cured by jokes. Telling jokes to computers would be futile.

As to outside the human brain though, do not jokes improve speed of healing of broken human bones. And what about animal brains. Milking cows yield more milk when the right music is played to them. Perhaps pigs thrive better (or chimpanzees in research laboratories) in a jokey environment?

But this is all a bit speculative, i do concede.

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