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March 01, 2020


Two quick thoughts.

In the context of patent claims, adjectives are problematic. You can't claim an idea, so "abstract" adds nothing. Trying to filter eligibility on the basis of a nothing is a frustrating exercise.

Second, thinking about an invention by reference to a technical problem is necessary but not sufficient. To be allowable, a claim must be directed to the solution, not the problem, and the solution must be defined, in a claim, in terms of a combination of technical features (rather than the announcement of a technical effect).

Another way of saying this, Max, would be that a claim must recite a combination of technical features that has a technical effect. It is the linkage between the technical features and the effect that is important and distinguishes claims directed to abstractions from practical inventions.


With no definition of “abstract idea” by SCOTUS, as I’ve suggested earlier, you could do just as well with a Ouija board.

Thanks for that answer, Kevin. I wonder though, how much of a challenge it will be, to define "technical".

No such definition needed, of course, at the EPO, where there is no Doctrine of Binding Precedent, and where 30-something Technical Boards of Appeal decide, in well over 1000 cases per year, what is "technical" and what is not and say so, in detailed reasoning, in their written Decisions. The sheer number of data points on the map of "What is Technical" runs by now to several thousand.

But in the USA, am I right, everybody looks to SCOTUS, definitively to tell us, in one Binding Definition, what "technical" means.

How about:

As used herein, “technology” means/encompasses the application of scientific knowledge for practical purposes, especially in industry, such as machinery and equipment developed from the application of scientific knowledge, to solve problems or invent useful tools.

One wonders if, as the horrible software and business method patents of the 80s and 90s expire, will the 101 abstract idea jurisprudence go with it?

Because all this 101 garbage is is a judicial reaction to bad patents enforced aggressively by trollish plaintiffs. They mostly die under prior art analysis, anyway, but it's hundreds of thousands of dollars later.

Great post, Michael. I think your heuristic is the best I have seen.

I know you've generalized by design, which I think is the right way to go. That said, an important practical variable that your test doesn't cover is the industry-specific differences in treatment i.e., in Chamberlain, the invention is mechanical, and the case is remarkable because the treatment is an outlier in that space, whereas that type of treatment is very common for high-level software and no one blinks an eye.

Kevin, your well-meaning definition of "technical" namely "the application of "science" for "practical" purposes" advances us no further than any English language dictionary. If you had laid it on the table of any EPO TBA over the last 20 years, working at the cutting edge of eligibility/patentability, it would not have helped that Board one jot or tittle. Inter alia, that's because of "creep". Most everything, these days, is deemed to be "science". Most everything is "applied" rather than "pure "science. The way I see it, your definition is too elastic, too vague, at least for a Supreme Court populated by justices who lack any significant education in the natural sciences.

There is SO MUCH wrong with an attempt to try to 'fit in' that which should NOT be 'fitted in' that I hardly know where to begin....

Maybe we should recognize why the Kavanaugh Scissors would be so appropriate here to take care of the mess that the Supreme Court has created?


To your comment of "Most everything, these days, is deemed to be "science". Most everything is "applied" rather than "pure "science"

I would question:
1) who are you to say that "most everything" is NOT appropriately deemed applied science (or if one prefers, applied math) today?
2) what is the basis for NOT wanting to have ANY such "applied" items be covered by patent protection -- expressly keeping in mind that the US Sovereign has chosen a much wider scope of protection than "technical" with the choice of Useful Arts...?
3) why do you profess "advance no further" and "not have helped?"

I posit that your feelings towards "creep" seem rather out of place given that the very nature of innovation IS one of perpetual 'creep' -- and one of the reasons why our Congress chose a broad and expansive subject matter eligibility wording is that it is simply NOT POSSIBLE to know a priori which direction innovation may present. In this regard, any (and I do mean ANY) 'animosity' based on 'creep' is suspect.

I have to say that it is incredibly amusing to see Michael Borella struggle with this stuff as if nobody has ever addressed any of these issues before, and much more directly, and without all the ridiculous misrepresentations. My goodness, folks, the basic principles were explained to you YEARS ago and you could have listened and tried to understand then but instead you just stood there and wept like chicken littles because (we were all told) nobody would bother to patent anything anymore because "nothing was eligible."

Let's just get two things straight.

First, the CAFC has never held or even suggested that a mechanical garage door opener was "an abstract idea". So stop suggesting otherwise, okay? Suggesting otherwise makes you look like a lying idiot. Not a good look for anybody.

Second, the eligibility problems with wireless communication do not arise because "wireless communication is an abstract idea." Again, that's just a silly way of thinking about what's going on here. The eligibility problems arise because wireless communication is old and because it's obvious in ANY context where one thing is sending a signal to another thing. Is everybody following along? We're all intelligent grown ups, right? Thank you. Once you accept this non-controversial proposition about reality in 2020, then it's easy to understand that inserting a CONTENT BASED DESCRIPTION OF A SIGNAL into an otherwise unpatentable claim can never turn that claim into a patentable claim. Why is that? Because you are effectively claiming an ineligible abstraction (the "meaning" of the signal) in a prior art context.

Before you reflexively start screeching in response to this, take a deep breath and just think about it. It's not that difficult of a concept and once you understand it you will understand why the dominoes are going to continue to fall and also why a lot of these "tech" claims are pure unadulterated garbage.

"Medical diagnostics and genetic engineering are other high-value fields that suffer from the Supreme Court's rulings"

Oh, the suffering! Just look at the devastation!

For cripesake, the idea that you can PATENT (?!?!) a correlation between a fact about your body and some "likelihood" of some other thing (good/bad/whatever) is so incredibly repulsive to most normal people that literally NOBODY except for a handful of mindless patent worshipping bloggers and/or lobbyists will ever come right out and advocate for it. Just give it up, put your tail between your legs, and crawl back under the rock with your fellow money grubbing lizard brains. Speaking as scientist and a patent attorney, you literally make me want to vomit and I can assure you I'm not alone.

Malcolm Mooney, under one of his SCORES of pseudonyms here (even as he acted as if using variable pseudonyms was 'the worst thing ever' over at the Patently-O blog) has returned with his usual assortment of mindless ad hominem and equally mindless "I already explained this to you" clap trap.

Get well soon, PatentDocs.

The thing is though, anon, or Skeptical, or whatever other name you please, what MM writes (whether here or on the other blog) makes a lot of sense to this particular patent attorney, who spends some of his time in prep and pros and the rest representing opponents troubled by a wrongly-granted patent. It might strike you as clap-trap. It might similarly strike those who make a living by successfully pitching for the work of drafting patent applications, but they are seeing (at most) only half the picture.


The fact that you agree AND seem to want to place that mere fact of agreement as an indicator of veracity very much is part of the problem that you SHARE with Malcolm Mooney.

Do you even see how that artificially elevated weighing is evidenced in your own remark on the multiplicity of pseudonym use portion of your reply here? Do you even recognize Malcolm’s duplicity, even as you seek to smear someone else (who not only has never whines about the use of pseudonyms, but who has provided historical context of the value of using pseudonyms)....?

I remain:

A pithy phrase, my foreign friend (can you recognize how it fits you...?):

The Ends do not justify the Means.

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