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September 28, 2009


In the eyes of an economist, all inventions go to one purpose: increasing human productivity. Less effort for equivalent result. More bang for the buck. Patents are intended as incentive for increasing productivity. Patentability is circumscribed by utility: a patented invention must be useful. Natural phenomenon are not patentable, but harnessing such a phenomenon is (think electrons racing around defined circuits). As a result, increasing productivity always alters the way humans organize their activity. However things were done in the past, an invention changes how somebody may do something. The dictionary corresponds with this by defining 'technology' as "the practical application of knowledge." On all points foregoing, the U.S. government does not converge.

In its Supreme Court amicus brief in the Bilski case, the USPTO opines:

[T]he term "process" encompasses all technological and industrial processes, broadly conceived. But it does not extend patent-eligibility beyond those bounds, to methods of organizing human activity that is untethered to technology.

The brief defines technology as "any machine or transformation of matter."

Posted by Patent Hawk at September 28, 2009 4:41 PM | § 101


It's not the job of the courts to make public policy. If the wording of the statute leaves a policy vacuum then legislation is needed, not judicial opining.

Posted by: Ah Pook at September 28, 2009 11:51 PM

Ah Pook,

Some may contend that it IS the job of the courts to make public policy, albeit more so in civil matters than criminal. Courts have been doing just so for centuries.

Further, exchange "courts" and "judicial" in your statement with "executive branch" and "administrative" and you have the current situation of the USPTO opining on what the law is. Is this any more (or any less) valid in your eyes?

Posted by: breadcrumbs at September 29, 2009 1:54 AM

The problem with the PTO’s brief is that Bilski is clearly related to technology. It is about level billing for commodities using Monte Carlo simulations to predict the future prices for commodities. The level billing is about information and information is the most important area technology in the modern economy. The Bilski case is about formalism over logic. If Bilski had just recited a computer system this case would not exist. However it is clear that Bilski has to be implemented on a computer to have any commercial value. For more information see http://hallingblog.com/2009/06/08/bilski-software-patents-and-business-method-patents/

Posted by: Dale B. Halling at September 29, 2009 6:38 AM

The PTO's brief addresses that problem by: (a) on the one hand, stating that specifying that a computer would be used in the calculation would not be sufficient to transform the claim into patent eligible subject matter; and (b) on the other hand citing favorably to Alapat that a
general purpose computer becomes a specific purpose computer, ala Alapat, when programmed to perform particular functions. So members of the Court can pick and choose what they like, gloss over the rest, and then agree with the conclusions. It is a sales job that has worked for millenia.

Posted by: broje at September 30, 2009 7:01 AM

"Patents are intended as incentive for increasing productivity.' or is an incentive for making money, one way or the other?

Posted by: John Prosecutor at October 1, 2009 11:15 PM

Perhaps both John Prosecutor,

Although as stated it is confusing and perhaps conflating separate items.

The incentive for the applicant is to make money - increasing productivity does not induce disclosure. He can invent and keep a trade secret and get the increased productivity without having to share what he has with the world. "Increasing productivity" may be an incentive, but is not one for the inventor.

The separate incentive for giving the money (by the way, only indirectly through the limited monopoly rights in the form of property rights) for the State is the possibility of increasing productivity.

People seem to be of the mind that an increase in productivity is guarenteed. It is not. The state cannot barter for such an animal when it does not exist. What the state can barter for is the disclosure of something which MAY increase productivity. Any other reading yields an unworkable "patents should only go to Best in Class" and "patents should be extremely rare" mindset - a mindset common to the anti-patent crowd. Our law simply isn't written that way. The law is written to encourage disclosure of even the incremental improvements (101's "or any new and useful improvement thereof"). WHat actually is adopted and becomes an increas of productivity is a function of myriad factors, including time, that are beyond anyone's control.

There are of course other issues that impact the debate, each with a variety of viewpoints and each flavoring how the whole system comes together.

Rambling a bit, let me put forth one for instance: there is the difficult area of deciding when such incremental improvements are novel and not obvious - By allowing the common sense and ordinary inventiveness of a PHOSITA into the equation, and erasing the Brightline rule, the courts have traded efficiency for an attempt at a hard and thorough case-by-case view (one in complete disregard for any management dictated limited X hours per examination - funny how this point never seems to make it into the Counts argument).

Balancing the omniscience given to PHOSITA with Congress' specific intent to eliminate the "flash of genius" requirement in the 1952 legislation seems to be a seesaw batle - KSR in particular in the least resurrecting the odious obvious to try paradigm.

Posted by: Noise above Law at October 2, 2009 3:22 AM


KSR has rejected the omniscient PHOSITA model. PHOSITA is a "person" (having only "ordinary creativity") not an automaton. You need to learn how to be "flexible". The old model of PHOSITA is gone. There is an new PHOSITA in town. It is time for you to start putting him under a microscope rather than sticking to old dogma.

Posted by: step back at October 3, 2009 2:21 AM

Step back,

I'm not sure how KSR has rejected the omniscient PHOSITA model. I am having trouble recognizing your position.

The Automaton vs. Person paradigm is not the issue. Rather, the issue is the Person having immediate and working knowledge of all art in the field as well as all art of ANY field that may be related to the gist of the invention and the answer to the problem. It is this supernatural ability that I am examining under the microscope. It is this supernatural ability that was given in KSR, along with "ordinary creativity", that has made 103 a virtual landmine and has been referenced on this blog as Obzilla.

This is hardly "old dogma".

Posted by: Noise above Law at October 4, 2009 10:42 AM

I agree with the Hawk. But I note the irony: Inventions that are new, but are not better than the state of the art, i.e., have no advantages and in fact may have many disadvantages, hence making the economy less efficient, are less obvious than inventions that are improvements over the prior art. After all, where is the motivation to make something worse than it already was? Without such motivation, you don't have obviousness, and you can't reject on that basis.

Posted by: Defector at November 3, 2009 5:02 PM