1. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris1 3rd Annual Information Technology Law Seminar The Patentability of Computer-Related Inventions by Roberta J. Morris Lecturer, Stanford Law School

2. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris2 For today, the slides will be posted at http://stanford.edu/~rjmorris/icle.ppt http://stanford.edu/~rjmorris/icle.ppt The final version, including survey results, will be linked on http://stanford.edu/~rjmorris. http://stanford.edu/~rjmorris Search for “September 2010”

3. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris3 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.

4. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris4 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

5. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris5 15 0 of 31 1.Prosecution 2.Litigation 3.Licensing / Transactional Work 4.None of the above / Do not work with patents Does your work involve PATENT: (Please pick just one, on whatever basis you like)

6. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris6 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

7. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris7 15 0 of 30 1.Yes 2.No, but I looked at the materials 3.No Did you hear my talk last year?

8. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris8 Patent Law by the Numbers: Are you familiar with 101, 102, 103 and 112? 15 0 of 31 1.Yes 2.No

9. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris9 Guide to the Numbers 101101: Patentable Subject Matter (and other things) 102102: “Novelty and Loss of Right.” Defines categories of PRIOR ART. Rejections under 102 are based on a SINGLE piece of prior art. 103103: Obviousness. Rejections under 103 are based on 2+ pieces of prior art. 112112: “Specification”: Requirement to describe and ENABLE [the making and using of] the claimed inventions (and other things) Quotation Marks are used because those very words are in the provision’s title in 35 USC. “NEW” – a word in 101 – means novel AND non-obvious

10. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris10 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 Results of Last Year’s Survey: Bilski 1

11. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris11 Results of Last Year’s Survey: Bilski 2

12. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris12 15 0 of 30 Is your understanding of the Supreme Court’s decision in Bilski v. Kappos: 1.Firsthand: I looked at / read / skimmed / all or some of it. 2.Secondhand: I read or heard about it on blogs, news reports, talks, etc. 3.Nohand (no knowledge)

13. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris13 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: 1.MORE likely 2.LESS likely 3.AS likely as before

14. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris14 15 0 of 30 If you answered 1 or 2, is that because 1.The 101 Test is easier/harder 2.COMPACT PROSECUTION: The PTO will look for prior art and consider enablement and not rely exclusively on 101 3.Other (if you choose OTHER, let’s talk!)

15. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris15 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 Outline. Page 8-1. 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 NB: Bilski lost in the PTO, the Federal Circuit, and the Supreme Court.

16. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris16 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

17. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris17 Upcoming Dates Tomorrow, 9/23/10: PTO’s Annual Business Methods Partnership Meeting http://www.uspto.gov/patents/resources/methods/bm_partnetship_2010.js p http://www.uspto.gov/patents/resources/methods/bm_partnetship_2010.js p Monday, 9/27/10: Last day for comments to the Interim Guidance

18. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris18 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 Outline. Page 8-1. 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 NB: Bilski lost in the PTO, the Federal Circuit, and the Supreme Court.

19. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris19 Claim 1 of the Bilski Application 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; (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.

20. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris20 The Bilski Application Original specification and the other claims: http://www.patentlyo.com/bilskiapplication.pdf 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

21. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris21 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 Outline. Page 8-1. BILSKI LOST. 101 probably was the ONLY basis for rejection ever.

22. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris22 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 Outline. Page 8-1. 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

23. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris23 Patentability of Computer-Related Inventions – Part II Outline. Page 8-1. 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

24. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris24 Patentability of Computer-Related Inventions – Part II-A Outline. Page 8-1 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 CHAKRABARTY – engineered oil-eating bacteria. Applicant WON. Anti-PAT: Dissent: Brennan White Marshall Powell Pro-PAT: Majority: Burger Stewart Blackmun Rehnquist Stevens 72 78 80 81

25. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris25 Patentability of Computer-Related Inventions – Part II-A Outline. Page 8-1 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) 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.

26. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris26 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) 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.

27. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris27 Patentability of Computer-Related Inventions – Part II.B Outline. Page 8-1. 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. 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

28. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris28 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.

29. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris29 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.

30. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris30 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…)

31. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris31 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.

32. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris32 Patentability of Computer-Related Inventions – Part III Outline. Page 8-1. 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. 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.

33. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris33 Patentability of Computer-Related Inventions – Part III.A.1 Outline. Page 8-1. 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.

34. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris34 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?

35. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris35 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 Patentability of Computer-Related Inventions – Part III.B.1 Outline. Page 8-1. 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.

36. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris36 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 Patentability of Computer-Related Inventions – Part III.B.1 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.

37. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris37 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 Patentability of Computer-Related Inventions – Part III.B.2 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.”

38. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris38 Patentability of Computer-Related Inventions – Part IV Outline. Page 8-1. 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!

39. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris39 Patentability of Computer-Related Inventions – Part V - 1 Outline. Page 8-1. 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.

40. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris40 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.

41. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris41 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.

42. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris42 PTO’s RESPONSE 7/27/10 Memorandum, 75 FR 43922 (request for comments, due 9/27/10)7/27/10 Memorandum

43. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris43 PTO’s RESPONSE -1 Factors Weighing Toward Eligibility Recitation of a machine or transformation (either express or inherent). [AND] oMachine or transformation is particular. oMachine or transformation meaningfully limits the execution of the steps. o Machine implements the claimed steps. oThe article being transformed is particular. oThe article undergoes a change in state or thing (e.g., objectively different function or use). oThe article being transformed is an object or substance. The claim is directed toward applying a law of nature. [BUT] oLaw of nature is practically applied. oThe 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] oThe claim describes a particular solution to a problem to be solved. oThe claim implements a concept in some tangible way. oThe performance of the steps is observable and verifiable.

44. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris44 PTO’s RESPONSE-2

45. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris45 PTO’s RESPONSE-3 Factors Weighing Against Eligibility: *** The claim is a mere statement of a general concept (see notes below for examples). oUse of the concept, as expressed in the method, would effectively grant a monopoly over the concept. oBoth 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. oThe claim only states a problem to be solved. oThe general concept is disembodied. oThe mechanism(s) by which the steps are implemented is subjective or imperceptible.

46. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris46 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; and obtaining 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?

47. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris47 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.

48. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris48 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 – 1.with a CLAIM are drawn to an abstract idea or a law of nature or a ‘mere’ concept BUT 2.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.

49. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris49 REWARD - 2 If I find such an application or even a close case, I’ll discuss it on my blog: http://myunpublisheworks.blogspot.com. 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.

50. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris50 The LAW Page 6-5 to 6-6 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 andDiscoveries. Patent Law Was this word INTENDED to exclude some INVENTIONS?

51. Sept. 22, 2010Patenting Computer-Related Inventions - RJMorris51 The LAW 35 USC 101. Inventions patentable. 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. Were these words INTENDED to exclude some INVENTIONS? They have been around in patent statutes since ~1623.