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3rd Annual Information Technology Law Seminar

3rd Annual Information Technology Law Seminar. The Patentability of Computer-Related Inventions by Roberta J. Morris Lecturer, Stanford Law School. For today, the slides will be posted at http://stanford.edu/~rjmorris/icle.ppt The final version, including survey results,

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3rd Annual Information Technology Law Seminar

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  1. 3rd Annual Information Technology Law Seminar The Patentability of Computer-Related Inventions by Roberta J. Morris Lecturer, Stanford Law School Patenting Computer-Related Inventions - RJMorris

  2. For today, the slides will be posted at http://stanford.edu/~rjmorris/icle.ppt The final version, including survey results, will be linked on http://stanford.edu/~rjmorris. Search for “September 2010” Patenting Computer-Related Inventions - RJMorris

  3. Patentability of Computer-Related Inventions I. Life before 6/28/10 Part 1 - The Bilski Application A. The Invention and Claim 1 B. What Happened (and Didn’t Happen) at the PTO II. Life before 6/28/10 Part 2– Judicial Decisions A. Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) B. Ancient Life: Statutory language from 1623 to 1952 (or 1999); the disfavored status of processes; O’Reilly v. Morse; business method patents’ long history of dissing dicta C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader) III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With IV. Life After 6/28/10 Part 1 - The PTO’s Response The 7/27/10 Interim Guidance, a supplement to the August 2009 Interim Instructions V. Life After 6/28/10 Part 2 - The Buzz, and What It All Means NB: Bilski lost in the PTO, the Federal Circuit, and the Supreme Court Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  4. Preliminary Questions • Can [clever, persevering, lucky] people get patents on computer-related inventions*? • Has the Supreme Court’s decision in Bilski v. Kappos changed the answer? • As a matter of law? • As a matter of lore? • What’s happening? • But first: who are YOU? * POCRI is nicer than CRP Patenting Computer-Related Inventions - RJMorris

  5. 15 0 of 31 Does your work involve PATENT: (Please pick just one, on whatever basis you like) • Prosecution • Litigation • Licensing / Transactional Work • None of the above / Do not work with patents Patenting Computer-Related Inventions - RJMorris

  6. Results of Last Year’s Surveys -Audience 4/5 practiced law full time 1/4 were registered to practice before the PTO (whether as attorneys or agents) Slightly more than 2/3 were lawyers who were not registered with the PTO 3:2 was the ratio of those whose job did : did not involve patents About 1/4 had written a patent application About 1/10 were inventors on a patent application A little less than 1/4 had never looked at any patents A little more than 1/4 had looked at many patents (>100) More than 2/3 were comfortable with the term PRIOR ART Patenting Computer-Related Inventions - RJMorris

  7. Yes No, but I looked at the materials No 15 0 of 30 Did you hear my talk last year? Patenting Computer-Related Inventions - RJMorris

  8. 15 0 of 31 Patent Law by the Numbers:Are you familiar with 101, 102, 103 and 112? • Yes • No Patenting Computer-Related Inventions - RJMorris

  9. Guide to the Numbers 101: Patentable Subject Matter (and other things) 102: “Novelty and Loss of Right.” Defines categories of PRIOR ART. Rejections under 102 are based on a SINGLE piece of prior art. 103: Obviousness. Rejections under 103 are based on 2+ pieces of prior art. 112: “Specification”: Requirement to describe and ENABLE [the making and using of] the claimed inventions (and other things) “NEW” – a word in 101 – means novel AND non-obvious Quotation Marks are used because those very words are in the provision’s title in 35 USC. Patenting Computer-Related Inventions - RJMorris

  10. Results of Last Year’s Survey: Bilski 1 About 2/3 had heard of Bilski already. Of those: about 1/3 of those had an opinion about the case, AND almost 3/5 believed there was (probably/absolutely) invalidating prior art to the Bilski claims Patenting Computer-Related Inventions - RJMorris

  11. Results of Last Year’s Survey: Bilski 2 Patenting Computer-Related Inventions - RJMorris

  12. 15 0 of 30 Is your understanding of the Supreme Court’s decision in Bilski v. Kappos: • Firsthand: I looked at / read / skimmed / all or some of it. • Secondhand: I read or heard about it on blogs, news reports, talks, etc. • Nohand (no knowledge) Patenting Computer-Related Inventions - RJMorris

  13. 15 0 of 30 Even if you answered Nohand, you can answer this: After the Supreme Court’s decision, are the chances of the PTO issuing POCRIs: • MORE likely • LESS likely • AS likely as before Patenting Computer-Related Inventions - RJMorris

  14. 15 0 of 30 If you answered 1 or 2, is that because • The 101 Test is easier/harder • COMPACT PROSECUTION: The PTO will look for prior art and consider enablement and not rely exclusively on 101 • Other (if you choose OTHER, let’s talk!) Patenting Computer-Related Inventions - RJMorris

  15. Patentability of Computer-Related Inventions – Part I II. Life before 6/28/10 Part 2– Judicial Decisions A. Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) B. Ancient Life: Statutory language from 1623 to 1952 (or 1999); the disfavored status of processes; O’Reilly v. Morse; business method patents’ long history of dissing dicta C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader) III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With IV. Life After 6/28/10 Part 1 - The PTO’s Response The 7/27/10 Interim Guidance, a supplement to the August 2009 Interim Instructions V. Life After 6/28/10 Part 2 - The Buzz, and What It All Means I. Life before 6/28/10 Part 1 - The Bilski Application A. The Invention and Claim 1 • What Happened (and Didn’t Happen) at the PTO NB: Bilski lost in the PTO, the Federal Circuit, and the Supreme Court. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  16. Dates – Recent Past October 30, 2008: The Federal Circuit decides In re Bilski, 545 F.3d 943 (en banc) October 29, 2009: ICLE IT Meeting November 9, 2009: The Supreme Court hears oral argument in Bilski v. Kappos June 28, 2010: The Supreme Court decides Bilski v. Kappos July 27, 2010: The PTO issues its Interim Guidance Patenting Computer-Related Inventions - RJMorris

  17. Upcoming Dates Tomorrow, 9/23/10: PTO’s Annual Business Methods Partnership Meeting http://www.uspto.gov/patents/resources/methods/bm_partnetship_2010.jsp Monday, 9/27/10: Last day for comments to the Interim Guidance Patenting Computer-Related Inventions - RJMorris

  18. Patentability of Computer-Related Inventions – Part I II. Life before 6/28/10 Part 2– Judicial Decisions A. Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) B. Ancient Life: Statutory language from 1623 to 1952 (or 1999); the disfavored status of processes; O’Reilly v. Morse; business method patents’ long history of dissing dicta C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader) III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With IV. Life After 6/28/10 Part 1 - The PTO’s Response The 7/27/10 Interim Guidance, a supplement to the August 2009 Interim Instructions V. Life After 6/28/10 Part 2 - The Buzz, and What It All Means I. Life before 6/28/10 Part 1 - The Bilski Application A. The Invention and Claim 1 • What Happened (and Didn’t Happen) at the PTO NB: Bilski lost in the PTO, the Federal Circuit, and the Supreme Court. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  19. Claim 1 of the Bilski Application • (b) identifying market participants • for said commodity • having a counter-risk position • to said consumers; and • (c) initiating a series of transactions • between • said commodity provider and • said market participants • at a second fixed rate • such that • said series • of market participant transactions • balances • the risk position of said series • of consumer transactions. • A method for managing • the consumption risk costs • of a commodity • sold by a commodity provider • at a fixed price • comprising the steps of: • (a) initiating a series of transactions • between said commodity provider and • consumers of said commodity • wherein said consumers • purchase said commodity • at a fixed rate • based upon historical averages, • said fixed rate corresponding to • a risk position of said consumer; Patenting Computer-Related Inventions - RJMorris

  20. The Bilski Application Original specification and the other claims: http://www.patentlyo.com/bilskiapplication.pdf (Dennis Crouch (PatentlyO) in August 2009: http://www.patentlyo.com/patent/2009/08/bilskis-patent-application.html Crouch notes that the application is in the parties’ Appendix to the Federal Circuit appeal. Original Application: 8 claims Final rejection (BPAI: 2006 Pat App Lexis 51) 11 claims Basis of rejection: 101 ONLY Patenting Computer-Related Inventions - RJMorris

  21. Patentability of Computer-Related Inventions – Part I I. Life before 6/28/10 Part 1 - The Bilski Application A. The Invention and Claim 1 B. What Happened (and Didn’t Happen) at the PTO BILSKI LOST. 101 probably was the ONLY basis for rejection ever. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  22. Patentability of Computer-Related Inventions – Part II I. Life before 6/28/10 Part 1 - The Bilski Application A. The Invention and Claim 1 B. What Happened (and Didn’t Happen) at the PTO III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With IV. Life After 6/28/10 Part 1 - The PTO’s Response The 7/27/10 Interim Guidance, a supplement to the August 2009 Interim Instructions V. Life After 6/28/10 Part 2 - The Buzz, and What It All Means NB: Bilski lost in the PTO, the Federal Circuit, and the Supreme Court II. Life before 6/28/10 Part 2– Judicial Decisions A. Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) B. Ancient Life: Statutory language from 1623 to 1952 (or 1999); the disfavored status of processes; O’Reilly v. Morse; business method patents’ long history of dissing dicta C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  23. Patentability of Computer-Related Inventions – Part II II. Life before 6/28/10 Part 2– Judicial Decisions A. Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) B. Ancient Life: Statutory language from 1623 to 1952 (or 1999); the disfavored status of processes; O’Reilly v. Morse; business method patents’ long history of dissing dicta C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  24. Patentability of Computer-Related Inventions – Part II-A II. Life before 6/28/10 Part 2– Judicial Decisions A. Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) BENSON – binary to decimal conversion. Applicant LOST. Anti-PAT: Majority: Stevens, Bennan, White, Marshall, Blackmun, Powell. Pro-PAT: Dissent: Stewart, Burger, Rehnquist. FLOOK –METHOD for calculating an alarm limit (temperature, most often) in catalytic conversion. Applicant LOST. Anti-PAT: Majority: Stevens, Brennan, White, Marshall, Blackmun, Powell Pro-PAT: Dissent: Stewart, Burger, Rehnquist. DIEHR – very similar invention to Flook’s. Applicant WON. Anti-PAT: Dissent: Stevens, Brennan, Marshall, Blackmun Pro-PAT: Majority: Rehnquist, Burger, Stewart, White, Powell 72 78 80 81 CHAKRABARTY – engineered oil-eating bacteria. Applicant WON. Anti-PAT: Dissent:Brennan White Marshall Powell Pro-PAT: Majority: Burger Stewart Blackmun Rehnquist Stevens Outline. Page 8-1 II-A. Patenting Computer-Related Inventions - RJMorris

  25. Patentability of Computer-Related Inventions – Part II-A II. Life before 6/28/10 Part 2– Judicial Decisions • Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) STATE STREET (Rich, Plager, Bryson). Financial METHOD claims. Mathematical Algorithms are OK. BMPs are OK. Test – citing DIEHR as interpreted by ALAPPAT (Rich) – requires a “useful,concrete and tangible result.” UCT was, per STATE STREET, the ALAPPAT court’s interpretation of “practical application” – words also not found in DIEHR. Outline. Page 8-1 II-A. Patenting Computer-Related Inventions - RJMorris

  26. Patentability of Computer-Related Inventions – Part II-A II. Life before 6/28/10 Part 2– Judicial Decisions • Recent Life: Benson-Flook-Diehr (Sup.Ct. 1972-78-81), Chakrabarty (Sup. Ct. 1980), State Street (Fed. Cir. 1998), Metabolite (Sup. Ct. 2006, Breyer’s dissent from DIG) METABOLITE: Dissent does not mind that Accused Infringer Lab Corp (represented by Roberts’ firm after trial) had NEVER argued 101, not even in its petition for cert. Dissent ignores the fact that Patent Owner won a jury trial. Is 101a SUBJECT MATTER JURISDICTION provision such that it can never be waived by a litigant? Breyer focuses on the fact that Lab Corp invoked unpatentability of ‘scientific facts’ in connection with a 112 vagueness argument. In the petition for cert., it mentions cases like Diehr in connection with its argument about induced infringement. Lab Corp also never argued that there was no single entity that would infringe. There were 2 steps, one performed by a lab, one by a doctor. Patenting Computer-Related Inventions - RJMorris

  27. Patentability of Computer-Related Inventions – Part II.B II. Life before 6/28/10 Part 2– Judicial Decisions B. Ancient Life: Statutory language from 1623 to 1952 (or 1999); the disfavored status of processes; O’Reilly v. Morse; business method patents’ long history of dissing dicta Yup. DISSING DICTA. Those old cases relied on for the proposition that “business methods are not patentable” pretty much all end HELD: THIS PATENT IS OBVIOUS. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  28. Patentability of Computer-Related Inventions – Part II.C II. Life before 6/28/10 Part 2– Judicial Decisions C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader Last year many of you said your own opinion was closest to dissenting Judge Newman’s. This year Justice Stevens’ opinion was closest to concurring Judge Dyk’s. Patenting Computer-Related Inventions - RJMorris

  29. Patentability of Computer-Related Inventions – Part II.C BILSKI (FED CIR): The Machine or Transformation Test is the SOLE test for patentability of method claims under 101: The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70 ("Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."); Diehr, 450 U.S. at 192 (holding that use of mathematical formula in process "transforming or reducing an article to a different state or thing" constitutes patent-eligible subject matter) 545 F.3d at 954 So that means you can get claims to a method if you are also getting claims to a machine anyway. Patenting Computer-Related Inventions - RJMorris

  30. Patentability of Computer-Related Inventions – Part II.C BILSKI (FED CIR): Majority also rejected: - Freeman-Walter-Abele - “Useful, concrete and tangible result” of State Street/Alappat, - categorical exclusions and - requirement of physical steps (Comiskey, as misinterpreted…) Patenting Computer-Related Inventions - RJMorris

  31. Patentability of Computer-Related Inventions – Part II.C II. Life before 6/28/10 Part 2– Judicial Decisions C. The Federal Circuit’s En Banc Decision (Michel’s Majority, Dyk’s Concurrence, Dissents by Newman, Mayer and Rader Only Newman wanted the PTO to go and examine the claims since everyone was dancing around the fact that claim 1 at least was OBVIOUS. Patenting Computer-Related Inventions - RJMorris

  32. Patentability of Computer-Related Inventions – Part III III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With Scalia didn’t write an opinion. Scalia did not join IIB2 and IIC2 of the Kennedy opinion, but did join II of the Breyer opinion. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  33. Patentability of Computer-Related Inventions – Part III.A.1 III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. Majority: Machine or Transformation Test is an OK test but not the SOLE Test The useful-concrete-tangible test Judge Rich made up in State Street is NG. We’re not ready to say that ALL business methods are unpatentable. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  34. Patentability of Computer-Related Inventions – Part III.A.2 III. Life on 6/28/10 -The Supreme Court’s [Non]Decision A. The Kennedy Majority, The Kennedy Plurality, What Scalia Could Not Agree With Kennedy’s Message: The Machine-or-Transformation Test is a fine test, but not the only test, and please don’t ask us what the other tests are or what would make a good test. IIB2 and IIC2 – Scalia did not join. Why not? What are they about? IIB2: M/T is sort of an industrial age test and we’re post-industrial IIC2: Judge Dyk’s logic (and thus Justice Stevens’) isn’t so post-industrial, either. Judge Kennedy is concerned about the future (PROGRESS?!) and Scalia is not? Patenting Computer-Related Inventions - RJMorris

  35. Patentability of Computer-Related Inventions – Part III.B.1 III. Life on 6/28/10 -The Supreme Court’s [Non]Decision B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With STEVENS (joined by GINSBURG, BREYER and SOTOMAYOR): I sort of concede that all the law about BMPs being unpatentable is dicta, but then I forget. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  36. Patentability of Computer-Related Inventions – Part III.B.1 III. Life on 6/28/10 -The Supreme Court’s [Non]Decision B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With Although courts occasionally struggled with defining what was a patentable "art" during those 160 years [1790-1952], they consistently rejected patents on methods of doing business. The rationales for those decisions sometimes varied. But there was an overarching theme, at least in dicta: Business methods are not patentable arts. [String cite.] STEVENS, J. concurring in the judgment. 130 S.Ct. 3218, 3245-6. Patenting Computer-Related Inventions - RJMorris

  37. Patentability of Computer-Related Inventions – Part III.B.2 III. Life on 6/28/10 -The Supreme Court’s [Non]Decision B. The Stevens Minority concurring in the judgment; The Breyer Concurrence, What Scalia Could Agree With Breyer’s Concurrence: Part II is a review of jurisprudence on 1. 101 2. Diehr and the CLUE (M/T) 3. THIS Court never said SOLE, and 4. Useful, concrete, tangible is NG. The purpose of part II, per part I, is to show how much everyone on the Court agrees. Scalia might agree with that that, but Part begins “I agree with Justice Stevens…that BMPs are not patentable … and join him in full.” Patenting Computer-Related Inventions - RJMorris

  38. Patentability of Computer-Related Inventions – Part IV IV. Life After 6/28/10 Part 1 - The PTO’s Response The 7/27/10 Interim Guidance, a supplement to the August 2009 Interim Instructions The 7/27 Interim Guidance. We have until 9/27 to comment. Go ahead! Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  39. Patentability of Computer-Related Inventions – Part V - 1 V. Life After 6/28/10 Part 2 - The Buzz, and What It All Means Claim in such a way as to pass the machine or transformation test. If you can’t, have a practical application for your abstract idea. (Like you could enable someone to use the abstract idea WITHOUT a practical application?) Expect (I hope? In my dreams?) that any 101 rejection will be accompanied by 102/103/112 rejections. Meet those and – I like to think– the 101 arguments should disappear. Outline. Page 8-1. Patenting Computer-Related Inventions - RJMorris

  40. Patentability of Computer-Related Inventions – Part V - 2 WHAT I HOPE: The PTO will prevent any pure 101 case from reaching the courts ever again in my lifetime... APPLICATIONS: Every final with a 101 rejection will also have a 102/103/112 rejection. INFRINGEMENT LITIGATION: If an ACCUSED INFRINGER raises 101 as a defense, and there is a ruling on that issue alone, the PTO will find prior art and commence a reexamination sua sponte. WHY? 102, 103 and 112 adapt to new technology, innovation, etc. Applying them requires hard work, not handwaving and philosophical posturing. THEY are the reason we have, need, and love PATENTS and the PATENT SYSTEM. We (the people) want to reward those who come up with something NEW as long as they TEACH us. Patenting Computer-Related Inventions - RJMorris

  41. Patentability of Computer-Related Inventions – Part V - 3 WHY? 102, 103 and 112 adapt to new technology, innovation, etc. Applying them requires hard work, not handwaving and philosophical posturing. THEY are the reason we have, need, and love PATENTS and the PATENT SYSTEM. We (the people) want to reward those who come up with something NEW as long as they TEACH us. Patenting Computer-Related Inventions - RJMorris

  42. PTO’s RESPONSE • 7/27/10 Memorandum, 75 FR 43922 (request for comments, due 9/27/10) Patenting Computer-Related Inventions - RJMorris

  43. PTO’s RESPONSE -1 Factors Weighing Toward Eligibility • Recitation of a machine or transformation (either express or inherent). [AND] • Machine or transformation is particular. • Machine or transformation meaningfully limits the execution of the steps. • Machine implements the claimed steps. • The article being transformed is particular. • The article undergoes a change in state or thing (e.g., objectively different function or use). • The article being transformed is an object or substance. • The claim is directed toward applying a law of nature. [BUT] • Law of nature is practically applied. • The application of the law of nature meaningfully limits the execution of the steps. • The claim is more than a mere statement of a concept. [AND] • The claim describes a particular solution to a problem to be solved. • The claim implements a concept in some tangible way. • The performance of the steps is observable and verifiable. Patenting Computer-Related Inventions - RJMorris

  44. PTO’s RESPONSE-2 Patenting Computer-Related Inventions - RJMorris

  45. PTO’s RESPONSE-3 • Factors Weighing Against Eligibility: • *** • The claim is a mere statement of a general concept (see notes below for examples). • Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept. • Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. • The claim only states a problem to be solved. • The general concept is disembodied. • The mechanism(s) by which the steps are implemented is subjective or imperceptible. Patenting Computer-Related Inventions - RJMorris

  46. Ferguson – Mentioned in Interim Guidance Filing date: 9/1/99 Claim 1: A method of marketing a product, comprising:developing a shared marketing force, said shared marketing force including at least marketing channels, which enable marketing a number of related products;using said shared marketing force to market a plurality of different products that are made by a plurality of different autonomous producing company, so that different autonomous companies, having different ownerships, respectively produce said related products;obtaining a share of total profits from each of said plurality of different autonomous producing companies in return for said using; andobtaining  an exclusive right to market each of said plurality of products in return for said using. See In re Ferguson, 558 F.3d 1359, 1361 (Fed. Cir. 2009) , cert. denied 6/29/10. Is 101 the obvious problem with this claim? Patenting Computer-Related Inventions - RJMorris

  47. Answers to Preliminary Questions Can [clever, persevering, lucky] people get patents on computer-related inventions*? Yup. Has the Supreme Court’s decision in Bilski v. Kappos changed the answer? Hmmm. As a matter of law? Sort of. As a matter of lore? Maybe a lot. Maybe not. What’s happening? Not what should happen. Yet. Patenting Computer-Related Inventions - RJMorris

  48. REWARD For a few years, I’ve been offering a reward to anyone who can show me a complete patent application – not just a claim, not just hype, not just a law school hypothetical – with a CLAIM are drawn to an abstract idea or a law of nature or a ‘mere’ concept BUT whose SPECIFICATION fully enables someone to MAKE AND USE this claimed invention AND 3. for which there is NO invalidating prior art. A. The claim has been drafted by an expert prosecutor thoroughly aware of KSR and the closest prior art B. A reasonable search by a motivated searcher thoroughly aware of KSR has found nothing. Patenting Computer-Related Inventions - RJMorris

  49. REWARD - 2 If I find such an application or even a close case, I’ll discuss it on my blog: http://myunpublisheworks.blogspot.com. Compare my search to the PTO’s: In the Request for Comments, the PTO is only asking people to submit CLAIMS. 75 FR at 43923. Patenting Computer-Related Inventions - RJMorris

  50. The LAW Page 6-5 to 6-6 Was this word INTENDED to exclude some INVENTIONS? The Constitution: ARTICLE I. Section 8. The Congress shall have Power *** [clause 8] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. Patent Law Patenting Computer-Related Inventions - RJMorris

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