By David Hricik, Mercer University School of Law. (Note – this is an update of the essay posted last week on the Patent Ethics site.)
I forget when I first thought about this, but it’s been a while. With all the discussion of Prometheus (sadly, the case, not the film, which was great), I figured this was a good time to raise it. At minimum, there’s a litigable question here, and assumptions that a patent issued on non-patentable subject matter is invalid need examination. I’d love to be wrong about this, but I don’t think I am.
Some History.
I have not scorched the earth, but from what I can tell no court has squarely addressed the question of whether the Patent Act allows a court to deny enforcement (on any ground) of a patent granted on subject matter that is not within Section 101. Instead, what the cases showed me was that law developed in the context of challenges to the USPTO’s denial of a patent have been used to invalidate issued patents – without analyzing the statutory authority to do so.
Let’s take a look at what most people assume is the law and see if we can get there: does the Patent Act allow a court to invalidate a patent that does not claim patentable subject matter?
Section 282
The starting point is 35 USC 282. It provides in pertinent part:
The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement, or unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,
(4) Any other fact or act made a defense by this title.
Federico’s commentary, often relied on to indicate Congressional intent, doesn’t help at all, but here it is:
The defenses which may be raised in an action involving the validity or infringement of a patent are specified in general terms, by the second paragraph of section 282, in five numbered items. Item 1 specifies “Noninfringement, absence of liability for infringement, or unenforceability” (the last word was added by amendment in the Senate for greater clarity); this would include the defenses such as that the patented invention has not been made, used or sold by the defendant; license; and equitable defenses such as laches, estoppel and unclean hands. The second item specifies “Invalidity of the patent or any claim in suit on any ground specified in Part II of this title as a condition for patentability”; this would include most of the usual defenses such as lack of novelty, prior publication, prior public use, lack of invention. The third item specifies “Invalidity of the patent or any claim in suit for failure to comply with any requirement of section 112 or 251 of this title”; the first section mentioned would include the defense of insufficient disclosure, and the second sentence mentioned would include reissue defenses. The fourth item merely specifies “Any other fact or act made a defense by this title.” All the defenses usually listed in textbooks on patent law may be placed in one or another of the enumerated categories, except a few which are no longer applicable in view of changes in the new statute.
Section 101.
Section 101 is relied upon as the basis for invalidating patents. It states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
While clearly granting power to the USPTO to issue patents on “new and useful” processes, it obviously also limits the USPTO’s power to do so.
The question here is not patentability, but validity. Simply, suppose the USPTO makes a mistake, and issues a patent on non-patentable subject matter. Is this a defense to infringement?
In my view, the answer is “no.”
Analysis.
Let’s start with the two specific subsections, because they make us focus on the text and show some very deliberate choices by Congress that easily could have gone the other way had Congress intended 101 to be a defense.
The second subsection of 282 is probably the most important: “Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability.”
Section 102 and 103 are “conditions of patentability.” They say so in their titles, and they are substantive legal conditions (technically, I’d call them “conditions of unpatentability” given the burdens of proof, but this works). The fact that 101 is not a condition of patentability is to me is very important: Congress chose in 282(2) to specify that only those things denominated as “conditions of patentability” are bases for invalidity. It then chose to label 102 and 103 as conditions, but not 101. Those are deliberate choices. In my view, a patent issued on non-patentable subject matter is not “invalid” under the second provision.
Subsection 3 of Section 282 is easy to apply to this question, but it is important because it also adds to the evidence that 101 is not a defense. Patentable subject matter is in 101, not 251 or 112. So that part’s easy: 282(3) doesn’t list 101.
But the important point, again, is that Congress deliberately thought about what should be invalidity defenses, and what should not, and left out 101 not just as a “condition of patentability,” but also in this specific paragraph, where it “caught” some strays. It left out 101. That says a lot.
Two down, two to go.
Now we’re left with arguing that, although it thought about what should be invalidity defenses in two different places, nonetheless we should imply that Congress meant to include it in some amorphous language in the other two subsections. We’re fighting uphill.
Let’s go to the first catch-all type subsection: “Noninfringement, absence of liability for infringement, or unenforceability.” Logically, I can’t make patentable subject matter fit, at all. Before explaining why, let’s be clear on the consequences of saying that Section 101 is within this section: it would be that the patent is valid but there would be no infringement.
“Unenforceability” is the easy one. The cases and legislative history I’ve read show this was designed to capture equitable doctrines like patent misuse and, arguably, inequitable conduct (long diversionary story there). We’d be straining to put 101 there.
Federico’s statements that the defendant hadn’t made the product, or had a license to do so, show that “infringement” means what we think it means. A licensed patent is valid, but “not infringed.” A patent that the defendant never violated is valid, but not infringed. So, I can’t make “noninfringement” logically work or work without giving words a very unnatural meaning.
Now the only arguable catch-all, subsection 4: “Any other fact or act made a defense by this title.” Here we are, trying to read it into the catch-all that, even Federico says, “merely” specifies things in the statute that are made defenses. But, section 101 is not made a defense by this title. Instead, it specifically points to other requirements and conditions. Again, if this were easy and clear, Congress would have put in 101 “it shall be a defense to patent infringement that…” or put 101 in Section 282.
So, tell me why I am wrong.
Let me get rid of some easy ones: no court I’ve found has ever addressed this issue. I think it’s pretty simple, but there you go. Second, don’t conflate patentability with infringement defenses. There are lots of things that can affect patentability that aren’t in 282. Third, 282 is exclusive: if you want so suggest that it’s not, you (a) have to say “Congress enacted a specific statute laying out defenses, but it’s just a guide” which is not in my view defensible; and (b) it says “shall be defenses,” not “may include” or some-such. Third, this is a relatively new “defense.” I can’t say I’ve scorched the earth, but in looking at CAFC cases it has only been raised a few times.
My, your tinfoil hat is very shiny today.
Thanks. The “mystery” of the sockpuppets has been solved in the meantime. More accurately, anon’s sockpuppetry has been exposed and that particular game of his has come to an abrupt end.
“ I scanned through the blog and did not see the following argument:”
You are excused but the argument has been raised several times and in several ways (including but not limited to me).
Please excuse me, if this argument has already been raised and discussed. I scanned through the blog and did not see the following argument:
Section 101 sets forth the subject matter for which one “may obtain a patent.” If the subject matter does not conform to Section 101, then a patent may not be obtained. This is true, even if the Patent Office is mistaken in its subject matter determination and issues a patent. Such a patent would be void ab initio.
It seems we do not need to address all these issues revolving around how Section 282 should or should not work.
Dennis, agreed.
Mr. Wrong, one more example that you exist in some delusional world.
Regarding software, I primarily rely on Alappat to support my views.
Ned – We're working on community building. Name calling doesn't help.
Mr. Wrong, how many fricken times to I have to point out that Prometheus is a problem? You act as if was not aware of the problem and that you, the great patent law guru of the world, are informing a mere mortal of the obvious.
The problem you have, Mr. Wrong, is that you are that.
Mr, FE, You might want to expand on this just a bit. The problem of 282 was introduced in 1952 and STILL exists. Are you another blithering I D I O T?
It’s not sophistry because it is the great Ned Heller that is doing it.
[eyeroll]
It’s not evasion, because it’s the great Ned Heller that hiked up his skirt and failed to provide the proper legal citation for his anti-software patent stances on the link to patentlyo.com thread.
[eyeroll]
Ned, let’s see the proper (legal) support for the positions you are advocating directly and without evasion or sophistry (in other words, don’t ask questions or try to change the subject, just provide the proper legal citations):
1) The so called configured machine is not a new machine at all (the anti-Alappat position)
2) must have software that automatically executed (the automatic execution position)
3) when needed… except on a temporary basis (the non-temporary position)
What? It’s not going how I think law should be? Well, let’s just move things around and call it “that’s the way it always really was.”
Never mind that a Supreme Court has said the oppoisite in a 9-0 decision (well, in every decision on the topic since the law was actually made in ’52), they are wrong and I am right.
[eyeroll]
The irony encapsulated in Brenner was highlighting the fallacy of making a legal argument on a statutory scheme that no longer existed.
Exactly the fallacy that Heller attempts to perpetrate.
It’s duplicitous to argue for the judicial exceptions as having must be formed early in your campaign to exclude Product of Nature as a judicial exception as you have with Chakrabarty, and then turn around and leave off Chakrabarty and the Product of Nature Exception because it does not fit your current argument for pre-1952.
As it turns out – you are wrong in both arguments.
“In non of these cases is any statutory authority cited.”
It is also telling that you omit every reference to any of the modern 101 cases where in fact “the Supreme Court has REPEATEDLY stressed, that the exceptions are implicit in 101” Quite in fact, you omit the critical as-is post 1952 law and Supreme Court interactions which proves the point against you.
“Novelty is a 102 issue, not 101. Nice non sequitur and way to top off you rduplicity with a fallacious strawman. No one is saying otherwise.
simple, no. I think the statutory authority was not 101 in the beginning, with the exception of substantial utility in Brenner v. Manson. But even there, if a product has no utiltity, how can one comply with 112's command to describe its utility?
Simple, repeatedly?
Look to the origins of the doctrines. Double patenting, substantial utility, principles in the abstract, products of natures… All of these began long ago before 101 was separated out of novelty and other conditions for patentabliy. Since '52, the SC has indeed pinned its statutory authority on 101, but not when the exceptions were first announced. I like to refer to Morse that is the primary source of the Law of Nature and Principles in the abstract exceptions. Le Roy v. Tatham had discussed these in the prior term, but Morse was the first case to really apply the exceptions. Morse clearly rested its statutory authority on what we now know as 112, not 101.
Double patenting: See Miller v. Eagle, 151 US 186 – Supreme Court 1894 and the cases cited. The earliest case is Suffolk Company v. Hayden, 3 Wall. 315, where "it was held that where two patents, showing the same invention or device, were issued to the same party, the later one was void, although the application for it was first filed, thereby deciding that it is the issue date and not the filing date which determines priority to patents issued to the same inventor on the same machine."
In non of these cases is any statutory authority cited.
Substantial utility: Brenner v. Manson, 383 US 519 – Supreme Court 1966 did find its authority in 101 (see fn. 13 and 14)
And, of course, Parke-Davis was a 1910 case. It relied on "novelty" in discussing the so-called product of nature exception. Novelty is a 102 issue, not 101.
Mr. Light, I don't recall you telling me that you were not NAL. If you did, and I ingored it, I apologize.
IANAE,
1. Equation. You say, it is a relationship and not a series of steps. OK, then. But an equation can be described also as a series of steps and be claimed as a process. The real problem is that the steps are not physical. That is, I submit, a 112 problem that requires one to describe how to make and use the invention, which under O'Reilly v. Morse, requires a description of physical embodiments, how to make them and how to use them.
2. Song. One can describe a particular song by its notes. The process of representing sounds using notes on a paper might be patentable per Morse. His code was patentable. But if one is claiming not the process of representation, but a particular song. Is this not obvious per se? And, just what functional utility does a particular song have to the process of representing sounds using notes? The lack of a functional relationship of a claim element to other elements in the claim creates 112, p. 2 problems. I claim: Apparatus comprising a boat and a wing. What do the two have to do with each other?
3. Risk. How can one build risk? Describe a single physical example of a risk that I can hold in my hand, that has mass and physicality. Risk, IANAE, is abstract in the same way as an equation and has the same 112 problem as did claim 8 of Morse.
4. A program that calculates a number. One can describe the program in words, write the words on a page and create descriptions of it in a computer memory. Some of these indeed are physical. But the number that it calculates. Is that physical? Can one build it? Give me one physical example of a number that I can hold in my hand, that has mass and physicality?
5. A beautiful rose, IANAE, is indefinite. That is a 112 problem.
A more difficult issue for me would be something like this:
Process for balancing a boat:
1. Distribute all cargo evenly across a boat.
2. Determine whether the boat has a persistent tilt.
3. Move cargo from the direction of tilt in the opposite direction until the persistent tilt is gone.
The result is a balanced boat.
Is this patentable?
.
I think that this is a valid point that would be raised by good lawyers. However, it does not prove that 101 is a condition for patentability.
I dispute whether your interpretation is “plain”.
I think you are skipping a step in your interpretation of 282(2). It has the words “conditions for patentability” but not in quotes. So, either the law was referring explicitly to sections that have the words “conditions for patentability” in their titles and left out the quotes or 282(2) was referring to something broader. In contrast, Congress could have referenced 102 and 103 explicitly like it did with 112 in 282(3), but it didn’t.
Either they were making space for a later “condition for patentability” and were concerned that they might forget to update 282(2) or they meant 282(2) to be more inclusive. Failure to satisfy the requirements of 101 means that you are not entitled to a patent, so it is technically a “condition for patentability” even though its heading does not contain those words.
Moreover, 101 and 102 have similar language but use reverse conditionals. 101 recites that if condition is met, you may be entitled to a patent. 102 recites that you are entitled to a patent unless the following conditions are met.
I don’t believe that Congress forgot the quotations marks is the only reasonable conclusion.
This suggests to me a cause of action against the uspto rather than the patentee.
Yes, but the defendant needs the answer in the context of his ongoing infringement proceeding. Let the PTO defend its action as a party to the infringement proceeding and let the court sort it out.
Unless everybody would be happier if the infringement proceeding were stayed pending the outcome of a parallel action against the PTO to invalidate the patent under 101, but I doubt it.
This suggests to me a cause of action against the uspto rather than the patentee.
Hey folks. How about we talk about patent law…
And if you subscribe to the second paragraph, isn’t this the very wickedest form of legal sophistry?
“The judicial exceptions have always been there above the statutes so-to-speak. ”
Should we be addressing this so loosely? Doesn’t this fall right into ANL’s position that if this is above the statute then the Supreme Court itself has violated the Constituion by usurping the Legislative Power as dictated in the Constitution under the separation of powers doctrine?
On the other hand, if as the Supreme Court has REPEATEDLY stressed, that the exceptions are implicit in 101, can you really (legally) move the goalposts and try to salvage case law by re-birthing the exceptions into the statutory defenses (ESPECIALLY given the distinction made by the 9-0 Prometheus Court)?
ANL,
Do you think I am concerned with the pettiness displayed when someone chooses to insult with a modified moniker? Don’t you think that that says far more about that person than the answer that follows? (I think you do as you indicate the guilt by association factor with the dubious contributors).
“Regarding the constitutional question – I think this is right in that there has to be some way for aggrieved parties to challenge wrongly issued patents – otherwise we have a due process problem. If not as a defense to infringement, then as a direct action against the USPTO.”
Are you saying that every court case in which a patent is challenged under 101 has to be thrown out on constitutional grounds? Do you recognize Pandora’s name engraved on the lid you are prying?
All,
It seems to me that this breaks down to those who want 101 to be a defense and so will argue that there are ways to make it a defense, and those who read the statute text plainly, and realize it’s not there without some mental gymnastics.
I frankly could care less whether it’s a defense to infringement or not. Haven’t thought one moment about the consequences, one way or the other. But I care about separation of powers and getting statutes right, and honoring Congress’ decision which, I think, is clear in the text to leave this question to the USPTO, not the courts. (I laughed when someone suggested this was an article I’d needed to write… I wish this stuff counted!)
But back to ethics I go. Do you know who your client is? Find out there..
David
Ned,
Perhaps you should doubt those two for the main reason that I have in the past directly refuted accusations that
1) I am female, and
2) that I am the woman Noise Above Law.
Not only have I said these things directly (and more than once), the last time I said them I said them directly to you.
Your response was an insultign emphasis on “Ms.” Much like you insult other posters without reason (calling simple questions simple minded for example). Is it any surprise that you hold up as exemplars the two most vile posters the blog continues to see? Your alignment with these two reaches more than just philosophical grounds and holds you in contempt.
The individual definition of the word “effectively” is not an issue. The holding of the Prometheus case is simply that you can’t patent laws of nature. There needs to be concept, application, and integration.
Nothing more.
Nothing less.
Everything else is just a figment of your imagination.
But you know what is real?
“Integration Analysis”
If you ever choose to face reality you can click on this link…
link to uspto.gov
Making mistakes is a complete non-sequitur to the changing permissibility concept in IV’s post.
Care to actually post on point?
“Effectively” also means that your claims must be effectively different than your Products of Nature.
See Myriad
Ssssssssscccccccccoooooooooooorrrrrrreeeeeeeeee!!!!!
#1 Reason why *suckies* leave Anon alone: He is one of the good guys.
suckie: ” The word “effectively” means … you can’t patent laws of nature themselves. That’s it.
The definition of “effectively” is “you can’t patent laws of nature themselves”?
Really, suckie? I’m giving you a chance to rescue yourself. Are you going to stick with that definition of the term “effectively”? Are you sure you don’t want to call a friend?
LOL.
No matter what the score, or how badly the defeat, MM, will still be sitting by the goal post, long after everyone has left the arena, rocking back and forth in the dark, muttering…
9-0 Suckie, 9-0.
” The word “effectively” means something, suckie”
It means you can’t patent laws of nature themselves. That’s it.
However you can patent an application of a “law of nature” that is “integrated” with a process as a whole. Same can be said for any judicially created exception to patent eligible subject matter.
If you stopped running around like a little child calling people names, and actually read the case , and the resulting USPTO Guidelines on “Integration Analysis” you would know this by now.
The word “effectively” means something, suckie. At least, it means something to me and it means something to the Supreme Court.
9-0.
Someday the stinging will stop, suckie. Perhaps it will heal faster if you give it some fresh air instead of the cold, dank basement air at your mom’s house. It’s okay. Nobody will take the still-unopened-in-the-box cylon action figure from your shelf while your gone.
“Why would I doubt those two?”
That’s not a serious question, is it?
Hey MM, you have time to post nonsense but not time enough to explain yourself? Come on. What is the caveat with the doctrine of inherent anticipation mean to you?
MM: “Prometheus sued Mayo, in fact, not because they were practicing the prior art (Mayo was free to do that) but because Mayo’s doctors “added the action set forth in the claim” (i.e., thinking the new thought).
101 Integration Expert: PTO Commissioner Diamond denied Diehr his patent for the same reason and the Supreme Court overruled the PTO. Old steps and new thoughts in a process claim are patent eligible, as long as they are integrated. See Prometheus, then read the USPTO Official Guidelines on Integration Analysis.
MM: “If you want to have a silly discussion about what some words on a piece of paper “prevent” people from doing, we can do that. It will be short and you will end up looking like an a–.”
101 Integration Expert: If you want to have a discussion about how your whacky mental steps test theory was ignored by the Office, and completely left out of the new USPTO Official Guidelines, while “Integration Analysis”, the antithesis of dissection, was included, then click here and let’s talk.
link to uspto.gov
The talk will be short and you will end up looking like an a–. But of course you already look like one.
“The claim at issue never prevented anybody from “thinking something new.” You could have thought that new thing before Prometheus and had no liability. However, you would have liability if you added the action set forth in the claim.”
This “point” has been pointed out to MM over a thousand times. But the only “point” he seems to get is the one on the top of his head. Although that does work out great for his shiny tin foil hat!
Hmmm, let’s compare the substance added by Anon and the substance added by MM.
Wow. No wonder the suckies leave Anon alone.
Oh noes, it’s the return of the great suckpopper mystery conspiracy theory!!!!!!
My, your tinfoil hat is very shiny today.
A statute on the books for 60 years should be so ambiguous as to require constant and changing guidance to the corps of examiners to implement
Because in your fantasy world the number of applicants and their behavior has remained consistent for the past 60 years.
Many, many, many years ago when I was first presented with a claim in the form [oldstep]+[newthought], I explained my misgivings about such claims. The question of primary importance had nothing to do with any alleged ambiguity of the statute or the case law. The problem with the claim was crystal clear. It was a question simply of whether one could “get away with it.”
Ultimately, the law and reason caught up with everybody. So now it’s time to change the game. Again. As always.
“the suggestion that you cannot correct any ‘best mode issue’ with a cert of correction.”
The lack of best mode is one of disclosure — not some minor technical error. If you can envisage a way that the USPTO would correct that via a certificate of correction and not issue a new matter rejection then I’m all ears.
“you don’t seem to understand the concepts of substantive ultra vires and void ab initio.”
As for ultra vires, the USPTO determiend that it was ‘in their power to act’ to grant a patent direct to a process claim (e.g., Benson, Bilski, Prometheus), since a process claim is explicitly mentioned in 35 USC 101. Simply on its face, the USPTO had the power to act.
As for “void ab initio” you have to make that showing that a claim directed to subject matter (e.g., a process) clearly within the scope set forth by 35 USC 101 seriously offends the law or public policy. The fact that Congress (apparently) intentionally omitted 101 from 282 as a grounds for invalidating a patent works against your premise.
“Because in suckie’s fantasy world the USPTO never makes mistakes.”
A statute on the books for 60 years should be so ambiguous as to require constant and changing guidance to the corps of examiners to implement.
This discussion will be further informed by my post on suing the USPTO to challenge patents:
link to patentlyo.com
The equation is a still a process.
An equation is not a process. It’s a description of a fact or relationship between two quantities. A process requires actually doing something. A paperback of Hamlet isn’t a process either, even though acting out Hamlet on stage would be a process. It’s just the recipe. Sorry, I think “medium carrying readable/executable instructions” is more trendy these days.
An equation may be applicable to describe what is happening in a process, and if the process is otherwise eligible it does not cease to be eligible merely because an equation is available to describe it.
Suppose I claim a new song. 112 — how do you make and use a new song?
You invent a song. You describe/enable it in your patent application. And you wonder how someone else might recreate the same song?
Suppose I claim a new program that calculates something abstract, like risk. 112 — build one.
I don’t see how that’s a 112 issue. Once adequately described, it should be trivial to build one. Programs calculate risk all the time. Besides which, building one is not a requirement under 112.
Suppose I claim a beautiful rose? 112 Indefinite. When something takes place in the mind, one cannot determine infringement.
That’s just bad drafting. And one determines infringement of mental steps the same way one determines intent in criminal cases. With evidence.
Mark–
Is it not the case that the question of agency authority is included within the presumption of regularity, in which case the defendant would in fact bear the burden of proof.
Agencies do have the initial authority to determine the scope of their own authority or jurisdiction, and such determination is itself an act that is given the benefit of the presumption of regularity.
No need, anon. The judicial exceptions have always been there above the statutes so-to-speak. Now if they are grounded in 101, then we do indeed have a problem with the '52 act removing 101 from validity.
IV–
I would say 2 final things on this matter:
1) you should be more careful in what you post. Some of it is worthwhile, some is not, for instance the suggestion that you cannot correct any “best mode issue” with a cert of correction. It would obviously depend upon the type of issue.
2) you don’t seem to understand the concepts of substantive ultra vires and void ab initio. Both the PTO and courts can err in their assessment of whether or not the s-m requirements of 101 are met. Yes, I understand the “major point” of your post, but you continue to assume what you set out to prove.
Look into it some more, and try not to be so turgid.
And, sincerely, good luck.
Anon, Malcolm and 6 both think that ANL is NAL and is a she. Now why would I doubt those two?
IANAE, even if 101 were the most likely cabin to house the judicial exceptions, Congress did not authorize 101 to be grounds for invalidity. We cannot rewrite the laws. They remain judicial exceptions, or they must find their authority under 102/103/112.
suckie If you did practice, you would realize the truth of my statement that what is permissible today at the USPTO may very well not be permissible tomorrow.
Because in suckie’s fantasy world the USPTO never makes mistakes.
IANAE, I agree. If it is patentable, it is valid. That was the specific intent of Congress in '52 — to align patentability and validity. They weren't entirely aligned prior to '52.
Lemley patentable subject matter was a jurisdictional threshold issue that could be raised at any time, though it would be a departure from current Federal Circuit precedent.
If it becomes clear only after claim construction that a claim is ineligible for patenting, the Federal Circuit forbids raising the issue?
It’s quite clear now that eligiblity under 101 is a “threshold issue” in the same sense that “standing” is a “threshold issue”. The moment the problem is identifiable, it can be raised.
IANAE, I must admit, double-patenting is the most difficult issue to squeeze into 102/103/112.
IANAE, but if he invents a way to render it into useful form, and claims it that way, why is such a claim unpatentable?
IANAE,
"Suppose you get a claim to "The Arrhenius equation". Clearly doesn't fit any of the statutory classes, clearly a 101 violation, but what's the 112 problem? The claim is perfectly definite and enabled, its metes and bounds are clear, and anybody using the claimed equation will know whether they infringe."
The equation is a still a process. The problem of lack of practical utility, though, is a 112 problem. Practical utility requires a physical example, and the claims have to limited to those physical examples and equivalents. Otherwise the claim scope is not enabled. See, O'Reilly v. Morse.
Suppose I claim a machine with process steps. 112.
Suppose I claim a new song. 112 — how do you make and use a new song?
Suppose I claim a new program that calculates something abstract, like risk. 112 — build one.
Suppose I claim a beautiful rose? 112 Indefinite. When something takes place in the mind, one cannot determine infringement.
Suppose I claim correlations between metabolites and the need to increase or decrease dosage. 112 Mental step, see above. Also, any claim to information is abstract. How does one make one? The thing patented must be physical or produce something physical.
Give me something that doesn't have a 112 problem if it also has "101" problems.
How come suckie and anon always agree with each other? How come anon never argues with suckie?
It’s so … mysterious.
“Wrong.”
No … correcting an issue under 101 is a mere formality in most instances — oftentimes handled as an Examiner’s Amendment in which the insertion of a just single word is oftentimes sufficient to address the issue.
Also, best mode is less of a formality than 101. You cannot simply correct a best mode issue by amendment (or certificate of correction or reissue). To correct a best mode issue you have to add new matter (i.e., the disclosure of the best mode), which would require the filing of a CIP.
“Whether or not the PTO has the power to act is an issue of substantive ultra vires and therefore cannot be characterized as merely formal.”
Except that the USPTO, when all these ‘questionable’ patents were issued, determined that they had the “power to act” because the claims at issue clearly fell within the language of 35 USC 101.
Very interesting post. It would apply not only to patentable subject matter, but also to utility, double-patenting, obviousness-type double-patenting, and inventorship.
Inventorship is particularly interesting on your statutory interpretation view, because section 256 is not in your list. But section 256 says “The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section.” That implies that improper inventorship that can’t be corrected under 256 does invalidate an issued patent, despite 282.
Also, I think there is a literature and maybe some case law on whether section titles are binding in statutory interpretation, though I don’t know the answer.
Here’s a possible interpretation: 102, 103, 112, 251 are defenses that must be pled, but 101 are threshold issues that are not defenses at all, but pure questions of law, and therefore not things on which the defendant bears the burden of proof, and which can be raised even if not pled. This might square with the 19th Century Supreme Court case law hinting that patentable subject matter was a jurisdictional threshold issue that could be raised at any time, though it would be a departure from current Federal Circuit precedent.
“because a 102/103/112 rejection presumes that the requirements of 101 have been satisfied”
Do you practice? If so, you would have NEVER made that statement.
“a patent cannot be issued or granted for any application that upon examination fails to disclose patentable subject-matter as required by 101.”
Again, you completely miss the major point of my post. All the patents that have been invalidated by the Courts under 101 were examined by the USPTO under 101 and found to be directed to statutory subject matter.
It was only AFTER the Courts got a hold of the patents and nibbled at the edges at what is considered patentable subject matter have these previously-acceptable patents were deemed not directed to patentable subject matter. If you did practice, you would realize the truth of my statement that what is permissible today at the USPTO may very well not be permissible tomorrow. There are thousands if not hundreds of thousands of patents that were EXAMINED to ensure that the claims were directed to statutory subject matter that now contain invalid claims because of the shifting winds at the Federal Circuit and SCOTUS. The statute hasn’t changed yet the Courts keep moving the bar.
In short, the Court’s continual tugging at the boundaries of patentable subject matter creates unsettled expectations, is counter-productive to the entire system and is inconsistent with the apparent intent of the drafters of the Patent Act of 1952. Once a patent application can be shown to be claiming a new and useful process, machine, manufacture, composition of matter or improvement thereof at the USPTO, then case closed. Congress didn’t want the matter revisited.
35 USC 101 is not being used as a vehicle to exclude patents to “abstract ideas.” The claims of Benson were not directed to an abstract idea – neither were the claims of Bilski or Prometheus. 35 USC 101 is being used by the Courts to make policy decisions as to what new technology should or should not be patentable. Not only are the Courts impinging upon Congress’s role to make policy on statutory subject matter, the case law produced by the Courts is so muddled that there is great uncertainty as to what is and is not statutory subject matter.
Curious then how he avoids the points I raise, including statutory construction points…
LOL.
“As can issues arising under 101.”
Wrong. Whether or not the PTO has the power to act is an issue of substantive ultra vires and therefore cannot be characterized as merely formal, and cannot be considered of the same nature as a formal error made by the applicant.
This is getting old quickly. I knew I shouldn’t have waded in here again.
Reality–
That is correct, I should have been more precise and added “…have been satisfied in the absence of an explicit 101 rejection”
That is not self-evident as it may at first seem, because the PTO could always reject on a 101 basis in the subsequent OA, although they did not do so in the first OA.
But for the purposes of an applicant addressing a 102/103/112 rejection, it is presumed that the requirements of 101 have been satisfied.
“it does not eliminate 101 as a source of defenses to a charge of patent infringement”
Except that no Court (as far as I know) has accepted your theory of “void ab initio” as you have applied it.
“it can best be considered a formality, correctable by either reissue or certificate of correction depending on the nature and extent of the error”
As can issues arising under 101.
“because a 102/103/112 rejection presumes that the requirements of 101 have been satisfied”
Sounds great, except it is not necessarily true. You mean to tell me that you have never seen 101 and 102/103/112 rejections on the same claims? The 101 and 102 are typically interesting ones.
I think the Supreme Court is going to fight to protect its dead letters…
+1
It’s also not a matter of “whole class of prior art that doesn’t have to be ‘prior’” because the intent of the two sections of law – 102 and 101 – are not the same.
And that does make it more than “only.”
Did you miss playing Calvinball with your face that much?
Sorry, by “defense” in paragraph 2 above, I meant grounds for a rebuttal or traverse by an applicant of a rejection from the PTO.
Also, applications are examined for compliance with the requirements of various statutory provisions, including those of 101, rather than pursuant to 101, as you suggest.
Legally it doesn’t matter upon which requirement of which provision the PTO chooses to examine first, even though 101 is a threshold question, and here is why: let’s say an applicant receives a rejection under 102, 103, or 112. In that case, there will be no practical defense under 101 of which they can avail themselves, because a 102/103/112 rejection presumes that the requirements of 101 have been satisfied, leaving the applicant to argue only the contrary–that the requirements of 101 have not in fact been satisfied, in which case they would themselves be arguing that they were not entitled to a patent.
There are no restrictions on the examination of complete applications by the PTO–they must all be examined. The PTO restrictions are on issuance and grant of patents, not on the examination of applications therefor–thus, an application can be examined for compliance with the requirements of 101, but a patent cannot be issued or granted for any application that upon examination fails to disclose patentable subject-matter as required by 101.
There is no inconsistency.
IV–
The OP’s stated his essential question thusly: “does the Patent Act allow a court to invalidate a patent that does not claim patentable subject matter?”
Legally speaking, the answer to this question is a resounding “no”.
When something is void ab initio, it is as if it had never occurred. Essentially, an ultra vires finding under 101 and a subsequent void ab initio characterization mean that there is no patent, and that there never was a patent.
Thus, there is no legal basis for any assessment or holding of validity or invalidity.
The point is that a defense under 101 is not an “invalidity” defense as contemplated by 282–but it IS nevertheless a defense to a charge of infringement of one or more valid and enforceable patent claims because, if successful, there are no patent claims that can be infringed. Think of it as an administrative law defense, rather than as a patent law defense.
282 refers only to defenses “under this title”, but does not serve to exclude defenses arising other than “under this title”.
As far as the new best mode requirement goes, it can best be considered a formality, correctable by either reissue or certificate of correction depending on the nature and extent of the error. Best mode disclosures will continue to be possible sources of unenforceability defenses relating to inequitable conduct.
So, regardless of whether or not the omission from 282 of 101 as a defense was intentional, it does not eliminate 101 as a source of defenses to a charge of patent infringement.
David, I posted a law review article from the ’60s that analyzed 282 and concluded that the new statute was intended to align validity and patentability. The article noted that former known defenses (RS 4920) appear to have been eliminated or changed in nature.
Frederico was a creature of the PTO. He might have had the view that if it is patentable, it is valid. That is a quaint notion.
I think, therefor, that Frederico viewed the defenses we now call 101 either as patentability problems or judicial exceptions. He did not think 101 was an independent source of invalidity or unpatentability.
If one actually reads the original cases on the exceptions, they appear to come out of thin air, or find their authority in some existing requirement. On sale was pinned to prior use, for example. Abstract was pinned to “112.” Product of nature? Probably 102 — see Parke-Davis.
Double patenting? That is a good one, but limited times is a constitutional requirement.
Take the latter as a starting point. It has long been a judicial exception not pinned to any statute. Perhaps, if we had to choose one, then 154? Patents expire after a fixed term?
Thank you Dawn.
That’s a major difference.
A very major difference. One that should bother you, because it defines a whole class of prior art that doesn’t have to be “prior”.
But that doesn’t make it any less “only”.
Curious then how he avoids the points I raise, including statutory construction points…
Um…, that’s not your tinfoil helmet MM.
“the only difference being that “we can’t prove that it existed before the filing date” doesn’t disqualify the reference.”
Only difference? That’s a major difference.
You are such a shmuck IANAE.
Have to laugh Ned, as even I, not caring much for “names,” knows that A New Light is not a woman and is not Noise Above Law.
Anon, OK. But some professors are recognized experts on something or another. I think Professor Hricik is an expert on statutory construction.
Anon, OK on that too. ANL or NAL has some good ideas too, besides the fact that she is a very good writer.