Editor’s Introduction:  The following post is by Wayne Sobon, and is based on the remarks he made at the USPTO’s Patent Subject Matter Eligibility Roundtable on December 5, 2016.  Mr. Sobon has over thirty years of experience as a patent attorney. He has served as chief IP counsel in several major corporations, as well as being an entrepreneur.  He is a past president of AIPLA and recently served on the Patent Public Advisory Committee of the USPTO.

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I’d like to go back to some first principles and history.

Article 1, Section 8 of the Constitution neatly divided the promotion of, on the one hand:

  • Science, the fields of knowledge and ideas, by securing exclusive rights to Authors of their Writings. Things like books and maps and charts.
  • And the Useful Arts, where science and ideas are transformed into tools and actions in the world, by securing exclusive rights to Inventors of their Discoveries.

Basic ideas and science would remain free for all.

One of the first Congressional acts was the Patent Act of 1790, which granted patents to any persons that “have invented or discovered any useful Art, Manufacture, Engine, Machine or Device, or any improvement therein, not before known or used”, provided that the invention or discovery was deemed “sufficiently useful and important”.


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I am a solo entrepreneur.  After twenty plus years in industry, I decided to take the risk and start my own business using my own capital. In the parlance of the law I am considered, almost affectionately, a micro-entity.

I knew I needed intellectual property protection and one of the first things I did was file for a trademark application.  With my micro-entity status, I successfully prosecuted my own trademark application, without objection from the examiner.  I also wanted to protect my underlying business process, and I assumed that my experience going through the patent prosecution process would go just as smoothly. I have come to learn otherwise.

As a micro-entity, getting my invention patented has proven to be a long and difficult road. With no political connections and very limited resources, it is painfully obvious that this system of multiple office actions, RCEs, and then perhaps appeals to PTAB and the Federal Circuit, was not designed for solo entrepreneurs.  The complexity of the system put me at a particular disadvantage to the larger corporations who are clearly benefiting from my, now published, patent application.


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On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility.  The USPTO published a list of eighteen questions in anticipation of the event, dealing with various issues in eligibility theory, legislative changes and so forth, and requesting comments in response.  Here are the answers I will be submitting to the Office.

Impact of Judicial Interpretation of Section 101

1. How has the Supreme Court’s interpretation of 35 U.S.C. 101 in the past several years affected the enforcement of patents and the development of subject-matter- eligibility law?

The Supreme Court’s current definition of a law of nature is scientifically incorrect.  The analysis of this issue is quite complex, but I will attempt to summarize the issue.  The Court’s definition in the Mayo case came down to: “the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.”


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The White House recently announced the Cancer Moonshot Task Force, an effort to “focus on making the most of Federal investments, targeted incentives, private sector efforts from industry and philanthropy, patient engagement initiatives, and other mechanisms to support cancer research and enable progress in treatment and care.”  Yesterday, in support of this project, the White House and the USPTO launched “Patents 4 Patients,” an initiative to “free fast-track review for cancer treatment-related patents.”  More specifically, the objective of the program “is to complete the examination of an application containing a claim(s) to a method of treating a cancer using immunotherapy within twelve months of special status being granted.” 

In theory this sounds like a great idea. In practice, there’s a significant problem:  Section 101 and the scientifically incoherent definition of a ‘law of nature’ imposed by the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  In Mayo the Court essentially ruled that any natural relationship or correlation that “exists in principle apart from any human action” sets forth a law of nature, and thus is not patent eligible without the addition of "significantly more."  


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See Part 1 AliceStorm at the USPTO While AliceStorm’s effect is most visible in the courts, because of their public nature, the real impact is largely unseen: it is the widespread rejection of patent applications by the USPTO.  The number of patent applications that have been rejected specifically based on Alice is vastly larger than the number of invalidated patents: well over 36,000 applications have been rejected based on Alice, and over 5,000 such applications having been abandoned.1 With the assistance of Patent Advisor, I have collected a large database of USPTO prosecution events (office actions and notices of allowances) issued over the past several years.  Table 2 is summary of the number of prosecution events analyzed, with respect to USPTO technology centers, and various time periods:2 Alice Table 2
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Go to: Part 1, Part 2, Part 3, Part 4, Part 5

(This series of posts is based on an upcoming paper for the AIPLA Spring 2016 meeting.)

Part III. FUNCTIONALISM: A PHILOSOPHICAL ARGUMENT IN SUPPORT OF THE FUNCTIONAL EQUIVALENCE OF MENTAL STEPS AND COMPUTER

Even if UDC did not support the Solicitor General’s argument that “the functions themselves are the same procedures which a human being would perform in working the same computation,” there remains whether this theory nonetheless holds merit on its own.  This is an important question because this argument underlies the “pencil and paper” test of patent eligibility that is frequently invoked by the courts.

The functional equivalence argument—that the mind/brain operates in a similar way as a digital computer—is now a familiar part of the “mind as computer” metaphor.  The “mind as computer” metaphor is presently formalized as the computational theory of mind or computationalism,1 the view “that intelligent behavior is causally explained by computations performed by the agent’s cognitive system (or brain).”2 Simply stated, as applied to humans, it holds that cognition in the brain is provided by computation.  This view is now the dominant view in cognitive science and related fields. 


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Go to: Part 1, Part 2, Part 3, Part 4, Part 5

(This series of posts is based on an upcoming paper for the AIPLA Spring 2016 meeting.)

Part II. BENSON AND SHIFT TO FICTIONAL MENTAL STEPS

The fictional form of the mental steps doctrine arose in Benson, where the Court stated:

A digital computer, as distinguished from an analog computer, is that which operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.1

and

the conversion of BCD numerals to pure binary numerals can be done mentally… can also be performed without a computer.2 

Where did the Supreme Court come up with this principle that a digital computer solves problems the same way a person does?  The Court cited Ronald Benrey, Understanding Digital Computers (1964) as support.  First, it seems odd that a book titled Understanding Digital Computers (“UDC”), which would likely be directed to a technical discussion of the operation of digital computers, would make such an authoritative-sounding statement at a time when science had little real insight into how the human brain actually performs calculations.  Second, the citation to UDC is illuminating but not sufficient, since clearly the Supreme Court did not do its own research to source this statement.


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By Helen Li*

On March 15, DeepMind’s AlphaGo, a computer powered by a self-learning artificial intelligence computer program, defeated Go grandmaster Lee Sedol. As the AI community celebrates this major milestone in making machines smart, the debate of “man vs. machine” is heating up. Over the past 25 years — especially the last five years — the AI community has transformed theoretical machine learning constructs to solve useful problems. AI techniques such as self-learning, reinforcement learning, and deep neural networks were developed to recognize traffic signs and classify images.

The recent rapid progress in AI was powered by the dramatic increase in financial investments in AI. According to the data compiled for Bloomberg News, AI startups have raised $967 million in funding since 2010, with a nearly sevenfold increase from $45 million in 2010 to $310 million in 2015. The past 25 years have also witnessed a proliferation of patents in AI technologies, from core AI technologies to a wide variety of application domains, with almost as many U.S. patents and applications mentioning AI in the past six years as in previous 20 years.


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Go to: Part 1, Part 2, Part 3, Part 4, Part 5 (This series of posts is based on an upcoming paper for the AIPLA Spring 2016 meeting.) By Robert R. Sachs1 Of the three recognized judicial exceptions to Section 101—laws of nature, natural phenomena, and abstract ideas—none has proved more resistant to reasoned judicial analysis than the last.  From its inception in Gottschalk v. Benson2 to the Supreme Court’s explicit refusal to define the term in Alice Corporation v. CLS Bank International,3 the boundaries of this exception have remained elusive.  Rather than principled analysis drawn on well-developed theories in philosophy of language, linguistics, cognitive psychology and other disciplines, the courts have gone “hunting for abstractions”4 to slowly but steadily sweep a variety of different and unrelated constructs into this “murky morass.”5  Thus, abstract ideas are said to encompass fundamental economic practices, methods of organizing human activities, mathematical algorithms, ideas themselves, and finally mental steps.  No one seems to notice that these four erstwhile subcategories have little, if anything, in common. Courts now routinely invoke this last subcategory to invalidate claims for software inventions that “can be performed in the human mind, or by a human using a pen and paper.”  CyberSource Corp. v. Retail Decisions, Inc.6  The emphasis on can be is intentional and important: it reflects the fundamental shift in the patent eligibility jurisprudence from considering whether the claimed invention was intended in fact to performed mentally (the “factual form” of mental steps) to a hypothetical embodiment of whether it could be (the “fictional form” of mental steps).
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Here are the updated numbers for #Alicestorm in the first quarter of 2016.   First, the overall trend of decisions:Monthy March 2016 is the first month since Alice was decided that the number of decisions upholding patents (15) exceed the number of invalidating decisions (12).  However, this is not a sea change.  Rather, it’s an artifact of the data: on March 22, 2016, Judge Robinson (D. Del.) released four decisions denying motions to dismiss that had been pending for many months.  The clustering of these four decisions spiked the numbers.  More important is that underlying trend of invalidating decisions continues upwards.
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