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December 16, 2020


"Experience without theory is blind, but theory without experience is mere intellectual play." Immanuel Kant.

For a theory that is coherent (creative application of an ineligible discovery is required to constitute an "invention" in the meaning of patent law), and actually maps (incompletely - e.g., cDNA in Myriad) to the SCT and some of the incoherent CAFC case law, but which excludes significant subject matter (including most diagnostics) that others would like to see eligible, others (as you no doubt have already read them Kevin) can see my briefs in Mayo and Myriad, my articles and book chapters, and my testimony to Congress (some here: https://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=29684).

It's not hard to have a coherent theory of ineligibility. It is hard to get consensus for what should and should not be eligible, and the lack of consensus (experience) drives the incoherence of theory here. I hope that better consensus can result in legislation, but it will likely look like gerrymandering and not a coherent theory of eligibility that courts can apply consistently and sensibly.

Happy holiday season to all. Josh

While your call to reason is admirable (as is your recognition that the score board is broken a proper starting point), I must take exception with the 'relativeness' and apparent 'special treatment" (perhaps only inadvertent) your phrasing calls forth. That 'little gadget' deserve every bit the same level of LEGAL protection as your life science advances. Substantive patent law -- on purpose -- is NOT built for silos, as that IS NOT how innovation works. See the James Burke series Connections for a fun reminder.

As second not-minor point is that in your attempt to 'walk back to' a 'reasoned' (or at least a negotiated) level, you step into a a very source of quagmire that 'got us here:' conflating prior art and eligibility.

Simple admonition on that point: DON'T DO IT.

Great idea Kevin! Perhaps the newly composed Supreme Court will have the courage to take up one of these cases and admit that making up exceptions to patent eligible subject matter that are found nowhere in the statute was and is wrong. These decisions have real world consequences. The most significant consequence from where I am sitting is that academics and industry can no longer effectively collaborate on diagnostic research since trade secret protection and publication do not mix.


Thank you for your analysis of patent eligiability and how to deal with this currently. I agree with your thinking, especially about claiming a machine approach when computing is a necessary invention element to be claimed.

Thanks, Josh. How do you reconcile the express use of the term "discovery" in both the statute and the Constitution with "creative application of an ineligible discovery is required to constitute an "invention" in the meaning of patent law"?

The problem is information.

The patent system as currently understood cannot deal with the fact the sometimes information is material, as in real and useful, and other times abstract, as perception that may or may not be useful.

I offer a simple answer to this problem, based on some simple propositions:

Claims and Inventions are distinguishable -

101 is for inventions. 102/103 112 are for claims.

A Process must have a result as a matter of law-

Not construing a result means a process invention has no reliable legal meaning.

Newly processed information is a kind of result-

Results of processes that are not information are not pressing problems in the patent system.

All information is abstract-

Mere abstraction should not be enough to achieve or deny eligibility, per Bilski.

The latin root of Abstract means to consume-
No human mind, no abstraction. Can anyone argue with that?

Abstract inventions are intrinsically abstract- when they result in information consumed by people. It's an inquiry that turns on a single fact.

Information consumed by non-humans cannot be abstract.

Abstract claims are extrinsically abstract, and so not a 101 problem, but a 102/103 112 inquiry.

Because PHOSITA varies in time and art. "Do it on a computer" patents are the classic choice: are the computer arts implicated, or the art being automated, or both, and to what extent are completely extrinsic, fact-based inquiries.

New diagnostic machines, compositions, and manufactures should be eligible.

Newly discovered diagnostic correlections should not be eligible.

Genetic information is not consumed by a human mind, and should be eligible, subject of course to the other statutory requirements.

Information inventions are the problem: the consumer of the information is the central fact that should determine eligibility.

Mr. Snyder, an analytic approach rules out your "in my world" approach.

You remain unmoored to the terrain in which you would want to wage war.

Your 'traffic' is directly met with a 'red' light (as opposed to a blue squash ball).

Dr. Noonan, as to your statutory construction question to Prof. Sarnoff, you may want to reference the writings of Sherry Knowles (in addition to the words of Congress at 35 USC 100(a): The term “invention” means invention or discovery).

This writing is not 'circular' (as others have remarked to another section of 35 USC 100, namely 35 USC 100(b) with its "The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material"), but instead is reflective of Congress recognizing legal terms of art and purposefully writing to expand what may be covered under the intellectual property landscape of patent protection.

"Start with the words of the Statute" is always a plus.

Also, just stumbled across this older item:


The Bilski court famously declined to define "process". The term is unconstitutionally vague, so you can start with canons of statutory interpretation, 'cause the word is useless.

No result as a matter of law is the same as the situation pre-Markman: not reliable. Failure of due process.

The misapplication of a possibly useful claim abstraction test in Alice is icing on a pretty poor cake.

Mr. Snyder,

You are quite clueless regarding the history of 101 here.

Please stop embarrassing yourself.

This is simply note that it is important not to further confuse two very different 101 defenses, with very different subject-matter applications and Sup. Ct. decision bases. Namely, "abstract" claims versus claims to things pre-existing in nature. That may seem obvious, but I frequently see the two lumped together as a single problem.

Mr. Morgan,

I hear what you are saying here.

However, what you are saying appears to be directly (and explicitly) contradicted by expert** opinion.

See: https://www.fr.com/defeating-alice/

** mind you, this expert opinion is more bombast than 'expert,' even as it is linked to a prominent law firm.

It's abstract ideas and natural laws that should be lumped together, because they are both the same thing: information. All the judicial exceptions can be thought of as information much of the time, because the problem IS information.

Can't remember the last case where a "natural phenomenon"- other than some form of information- was in major controversy.

"The latin root of Abstract means to consume"

Without offering comment on any other aspect of Martin's 17 Dec post, this etymological assertion simply is not true. "Abstract" is a compound of "ab" (from, away) and "trahere" (past participle = "tractus," to pull or drag). The "abstract," in other words, is that which one observes when one "pulls away" from the various individual particulars.

"Consuming" has nothing to do with this. It is very much possible to "pull away" from individual specifics without consuming them or using them up.

Good comment, Greg. Is "abstract" then the same as "extract"? Same Latin root, more or less, and no consuming there either.

A dentist will happily abstract for you the root cause of your tooth pain and then extract for you your offending tooth. Extracting the cause and then abstracting the tooth seems wrong, somehow. Do the two words mean the same, or not?

So I Googled it and here's what I found:

"ex is really a more violent concept, expressing that the motion begins within one thing and goes elsewhere. ab expresses motion originating from a source, in a more vague sense (could be within the source or from its periphery), and going elsewhere"

But wait. Would the dentist agree that tooth extraction is "a more violent concept". I hope not. Then again, would patent attorneys agree that the sense of "abstract" is "vague"? I rather think they would.

Happy Holidays, everybody.

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