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December 30, 2018


You dismiss as "unworkable" Judge Mayer's view, that "ideas about how to improve or influence human thought and behavior" should be held to lack basis for patenting. Do you therefore assert that the "technical character/technical feature/objective technical problem/technical effect" caselaw of the European Patent Office, established over 40 years and by now clear and unassailable, is "unworkable"?

Or is it only in the USA (because of the way the patent statute is worded perhaps, or because of the jurisprudence of the Supreme Court) that it is "unworkable" to draw a distinction between fields of human thought and fields of technology?

I will go further: the type of PRE-determined mindset and absolute disregard for the Rule of Law (and to add injury to insult, Judge Mayer even quotes the notion that a panel is bound by earlier panels) as evidenced in Judge Mayer's concurrence raises (in my humble opinion) a serious question as to the propriety of Judge Mayer to even remain on the bench.

Contrast the position of Judge Mayer and what is self-evidently politicking for a different version of law with the actions that former Chief Judge Michel took.

When former Chief Judge Michel realized that his personal views were over taking the cases being placed in front of him, he resigned from the bench and took a personal path of advocating the legal position that he believed in.

I would ask that EVERY ONE who draws Judge Mayer on a panel put forth an official request for Judge Mayer to recuse himself based on his pre-ordained views.

Max: I think you have hit on the problem: Judge Mayer's views are categorical, while the European view is functional - what does the claim do (i.e., the "technical effect?). That can be cast in a categorical light, too I suppose, but it is more difficult to do so and lends itself less well to a "sheep v. goats" or "I know it when I see it" mentality.

Thanks as always for the comment.


The US and EPO standards are apples and oranges. In the EPO, some subject matter such as rules of a game is excluded by statute. Also, the EPO combines novelty / inventive step into the subject matter analysis, requires that patentable subject matter recite a technical solution to a technical problem, and sets forth a somewhat more clear analysis for making this determination.

In the US, we have a pile of self-contradictory case law. Judge Mayer's suggestion to draw a line between humans and machines does not benefit from the background that we have in the EPO, nor is it clear how his test would be applied in practice given that the Federal Circuit cannot even agree how the current test is to be interpreted or applied.

Having said that, some of my acquaintances who practice before the EPO have much to say about the "technical effect" test and little of it is good.

Mike Borella,

Without (necessarily) casting stones, what is it (in general or in particular) that is "little of it is good" in regards to the "technical effect" test?

With full recognition that each Sovereign may choose to implement a patent system as they see fit to do so, I respect the choice of the EPO Sovereign to set up a "technical effect" litmus test (even if "technical" is either undefined, or defined in circular terms).

As you point out, the sovereign there has set up a system that serves their "Technical Arts" choice (and I would also distinguish that "Technical Arts" and our Sovereign choice of "Useful Arts" are NOT the same thing, with our Useful Arts being much more broad -- and basically anything outside of the Fine Arts).

I would even advance that their prohibitions (on a "per se" and "as such" basis) would appear to (now) provide BROADER patent coverage than the current anti-patent climate of the United States seems bent on (or at least, a certain contingent of the judicial branch seem bent on).

Is there a "translation" effect that you think drives any "dissatisfaction" with a "technical effect" test? Is it the lack of being willing to "nail down" just what "technical" means?

Hey Skeptical:

The problem with Mayer is that he has senior status and frankly doesn't care that what he says about 101 is completely inconsistent with existing Federal Circuit precedent. He needs to retire (be retired) IMMEDIATELY.

"The Court disagreed, noting that "the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps" and that the ineligible inventions of Alice and Bilski both required actions in the physical world."

Paraphrase: because we erred before, and said that physical things are abstract, we have to continue to err now, it's called precedent.

And I agree with EG: Mayer has again shown that he should have retired long ago.

Thanks to the three who replied to my comment. I feel compelled to write a bit more.

First, Mike, as to your:

"some of my acquaintances who practice before the EPO have much to say about the "technical effect" test and little of it is good."

my suspicion is that, when they discuss eligibility/patentability issues with you, these acquaintances of yours are reticent on the "good" aspects of life at the EPO simply out of politeness to their host. But tell us, do, which parts of it they disparage. I'm curious.

Second, those acquaintances of yours, Mike, will agree with me, I have no doubt, that the EPO's "technical character" test that works so well in a civil law jurisdiction would not be so easy to import into an English common law system built on Binding Precedent (say, England, or the USA). That's because it is the accumulating weight of thousands of cases at the EPO that puts flesh on the bone of what "technical character" means, rather than some once and for all definition handed down by a Supreme Court.

Third, the EPO way succeeds only because the eligibility filter is so coarse and the patentability filter so fine. Any scrivener worth his pinch of salt can draft a claim that is eligible at the EPO. But it is beyond the scrivening skills of any draftsman to get a claim directed to nothing more than a method of playing a game, per se, past the Art 56 obviousness filter. Why: because the only sort of non-obviousness that "counts" at the EPO is the sort of non-obviousness that is delivered by "technical" means to solve an objective "technical" problem. A non-obvious new way of playing a children's game, or a new and non-obvious TV game show concept isn't solving any problem in technnology, so isn't fit to be patented at the EPO.

I have two questions.

First: when (if ever) will the courts in the USA also confine the obviousness enquiry to that which is to be found within a GATT-TRIPS "field of technology"?

Second: do you agree with anon's equation, that
Useful Arts = All Arts - Fine Arts?

Thanks Kevin. You observe that the EPO approach:

"lends itself less well to a "sheep v. goats".... mentality"

But isn't a simple objective "Is it a Sheep or is it a Goat?" question for deciding on eligibility/patentability exactly what (most) everybody craves?

Perhaps I have misunderstood your thinking. Could it be that you want a test that is indeed as far as possible objective, that the imperative is indeed to squeeze out subjectivity?

If so, do you think the EPO decisions exhibit a higher level of objectivity, thereby gifting practitioners a higher level of confidence in their pronouncements what subject matter is fit for patenting and what is not?

And, if so, what was it that gave us all that higher level of objectivity? Might that be something of interest for the USA?

I find MaxDrei's first two questions to present interesting dichotomies.

First, he fumbles about (apparently) with the fact that Useful Arts is broader than technical arts, and at the same time wants to bring attention to a possible violation of the US [of GATTS-TRIPS] to apply even (MaxDrei's version) of technical arts - whatever that is, as MaxDrei has never proffered a definition.

which brings up a "sub-topic" in that the CAVEATS of "per se" and "as such" provide a freeway-wide travel path to actually patenting software and business method innovations (leastwise, moreso than the current US climate).

Additionally, MaxDrei's odd treatment of judicial precedent AND wanting some type of definitive "evolution" of just what "technical" means in the first instance is always amusing.

Here, there is a "double-down" effect in that apparently, there is NO actual definition of "technical" to be had from MaxDrei (or from the EPO), and then the idea that a LACK of binding precedent would EVER be able to provide a definitive answer staggers the application of critical thinking.

We start with a "no-definition" state, which is odd in and of itself. How can MaxDrei imply that the US is not living up to something that is undefined? What if the US just happens to define "technical" differently than the EP (whatever the EP does at the moment)?

Then we can chuckle at the notion that anything left to twist and change in the wind (anything truly lacking stare decisis), can EVER be said to be "defined," since the notion as put forth from MaxDrei, tomorrow's "meat on the bones" can fully be vastly different from today's version of "meat on the bones" -- and that would be perfectly fine.

A decision either binds or it does not bind.

A decision that does not bind CANNOT control what even that very same court may do tomorrow. This is the opposite of what MaxDrei claims: "exhibit a higher level of objectivity." There is NO confidence in pronouncements if tomorrow's pronouncements are not constrained in any way by today's pronouncements.

I grant that MaxDrei may not be capturing the actual legal effect in his statements, but it is his statements that offer the "delight" of self-collision.

The second question begs an answer from MaxDrei to the rejoinder, of why would it NOT be the case that Useful Arts = (All Arts - Fine Arts)?

The dichotomy being that this too is something that MaxDrei "wants" but does not want to partake in any "defining." Here at least though, MaxDrei may be excused from not understanding the US Sovereign's choice, as it is not something that he has actually dealt with.

GATT-TRIPS contemplates patent rights in "all fields of technology" but no further. US patent law contemplates patents within the "useful arts" but no further. Who says (other than Skeptical) that all human arts are "useful" except for fine arts? Who says (other than Skeptical) that the EPO's "technical" is not in compliance with TRIPS "all fields of technology"?

As to the EPO caselaw on "technical", the analogy of a golf green might help. The "green" (say the Rules of Golf) is the area of short grass surrounding the hole. But just because a given blade of grass is short does not prove that it came from the green. Just as you need a multitude of blades to see whether the golfball is on the "green" or not, so you need a multitude of patentability/eligibility decisions to see whether any specific claimed subject matter really does use a combination of technical features to solve an objective technical problem.

You misconstrue what I have said, MaxDrei.

The utility aspect of Useful Arts is drawn in distinction to the expression aspect of Fine Arts.

If you have half an inkling of our Sovereign's Constitution, you would recognize this symmetry. I am curious though - what are "human arts" that you see outside of the symmetry of Fine and Useful? You appear to think that there must be some (and that these some are surely easily recognizable).

As to "Who says (other than Skeptical) that the EPO's "technical" is not in compliance with TRIPS "all fields of technology"?

I said no such thing. I do not see even remotely how you could come to such a conclusion.

Lastly, I do not see how your attempted "golf green" analogy ties into any of the points that I have presented. It matters NOT AT ALL your attempt of "a multitude of decisions" in regards to the fact as I point out that a decision binds or it does not bind (and the immediate effect that a decision that does not bind CANNOT be expected to provide either confidence or a "higher level of objectivity."

So you make several mistakes in your reply here - not getting right what I DID say, and getting things wrong with things I did NOT say.

"Who says (other than Skeptical) that all human arts are 'useful' except for fine arts?"

To be clear, Max, there is *no* authority for this understanding of the term "useful arts." This asserted definition ([useful arts] = [all arts] - [fine arts]) is an idiosyncratic opinion, not a restatement of settled US law.

Thanks Greg. I suspected as much. Skeptical is obsessed with something he calls the "undistributed middle". Let him apply it here, to the gap between useful arts and fine arts.

Back in the days when the US Constitution was written, the word "technology" did not exist. Back then, they used a different expression to mean the same thing, namely "the useful arts". Every reasonably intelligent and enquiring mind focussing on the Constitution knows that.

As to blades of grass, it is entirely banal that a multitude of data points reveals a truth, like what diseases smoking tobacco can exacerbate (or cause). Likewise, it is entirely unremarkable that, in a civil law system, a growing multitude of data points from the Boards of Appeal of the EPO can, over the progress of time, sharpen, clarify and reveal what is "technical". So it is, in daily practice, these days.

Thanks Greg, please feel free to address the notion in view of the Constitutional symmetry (if you deign to do so).

...just because you are unfamiliar with the symmetrical make-up and the Constitutional analysis does NOT project that the view is "idiosyncratic."

Maybe you should be more polite as to views that you lack the legal background to? Heavens knows, you enjoy being polite to those who show NO knowledge of the legal items that they want to discuss.

Just a thought.

If one wants actual legal *authority* as to what is meant by the term "useful arts," one would do well to consult that which Judge Giles Rich had to say in In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979) ("[T]he present day equivalent of the term 'useful arts' employed by the Founding Fathers is 'technological arts").


As noted on another blog (to which you have turned a blind eye), your desire to use In re Bergy is not proper.

...and I would add that it is rather rude to place your sensitive feelings over what will be at times vigorous discussions.

Another oddity from one that portrays "politeness" as a virtue - even to the extent of fostering rather "in the weeds" unhelpful tangents to existing law.

Your choice, just not a great one.

Let us reflect on arts that are not at all "fine", are certainly "useful" yet are not within the ambit of the "useful arts". Let use the example of former UK Prime Ministers Margaret Thatcher and David Cameron, both having the letters "MA Oxon" after their name. They both graduated from Oxford University as "Master of Arts", Maggie in chemistry and faux man of the people Dave in PPE (politics, philosophy and economics). Dave's PPE was certainly more "useful" to him in his chosen career than Maggie's chemistry degree.

Trial lawyers are masters of the rhetorical arts (of pleading a case) and the forensic arts (of cross-examining a witness). Very useful arts, but not within the ambit of those arts the progress of which the US Constitution seeks to promote.

Those rugby players who play in the front row of the scrum are generally regarded as masters of what are generally referred to as the "dark arts" (of how to dominate the opposing front row). Extremely useful, those arts, when it comes to chuck out time in a dodgy venue in a rough part of town. Those dark arts are certainly not "fine" though, and neither are they the sort of arts that the Constitution wants to promote.

Sonot all "arts" that are indisputably "useful" are within the ambit of the Constitutional "useful arts". Just as Judge Rich accurately divined.

anon (Skeptical) what the F is "symmetrical" supposed to mean to me and other readers. Can it seriously be that you are suggesting that the contrast between patents and copyright is the same as a contrast between those arts that are fine and those that are useful? That would be piling one idiosnycratic opinion on another. Who other than you says that copyright is limited to the fine arts anyway?

"Trial lawyers are masters of the rhetorical arts (of pleading a case) and the forensic arts (of cross-examining a witness). Very useful arts, but not within the ambit of those arts the progress of which the US Constitution seeks to promote."

You make mere assumptions and dress them as facts.

Forensic arts are very much part of the Useful Arts.

Business methods (and to anyone not recognizing the impact of Deming et al), are very much part of the Useful Arts.

Sorry MaxDrei, you are merely inserting your feelings as if those feelings were more than mere feelings.

As to the meaning of "symmetrical," it is one of those things that had you ANY background in understanding Constitutional law (and in truth, any legislative writing), you would need not ask the question. This is very much NOT "piling one idiosyncratic opinion on another." That you think so only shows your lack of understanding of the subject matter.

(and you also misconstrue with yet another statement I did not make with "says that copyright is limited to the fine arts anyway"

You really need to understand the context of the conversation in order to stop misconstruing what is being said. It's as if you are so out of touch with the context of the legal discussion, that the basic terms have no meaning to you.

I missed your earlier post MaxDrei, and that post continues to misconstrue my position and is otherwise error-laden.

For one thing, Googling the etymology of technology reveals that the word was extant in the beginning of the early 17th century, well before the US Sovereign fashioned its choice of Useful Arts (see https://www.google.com/search?source=hp&ei=EfIwXP_1C4WfjwT-g474CA&q=etymology+of+the+word+technology&btnK=Google+Search&oq=etymology+of+the+word+technology&gs_l=psy-ab.3..0j0i22i30l2.962.15633..16360...10.0..0.89.2918.46......0....1..gws-wiz.....0..0i131j0i10j33i22i29i30j0i13j0i13i30j0i13i10i30j0i22i10i30.J59urR8KFgo ).

Secondly, it is YOU that invokes this notion of "undistributed middle" and then turn around and accuse me of being obsessed with it. Sorry, but that just does not fly.

YOU may not be able to grasp the way that our Sovereign originated, nor why they choose as they choose, but your attempts to insert your own (limited) world view and understanding into that situation is simply neither sufficient nor accurate.

Instead of trying so very hard to hold onto your understanding (and trying to squeeze what I say into that limited understanding), I suggest that you begin by realizing that your view does NOT accord with our Sovereign.

Once you accept that, then you may be more open to actually learning something that is outside of your current grasp.

As it is, you only grasp what you have grasped from your Sovereign-centric viewpoint, and errantly think that your "eyeglasses" will work for others, since they work for you.

Let me add, since MaxDrei has refused to provide a non-circular definition of "technology" in order to even begin comparing the terms, that I have found the following link entertaining as to what may fall within "technology" as that term MAY be deemed to capture.

I am, well, skeptical, that MaxDrei will be able to incorporate anything from this link into the discussion, but nonetheless, one can always lead a horse to water...

The link: https://fee.org/articles/where-we-get-the-word-technology-and-why-it-matters/

This article is already "under the fold" and is about to go under two "folds," so I guess we will have to wait another day to see if the horse drinks from the well.

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