1 2 3 4 5 6 7 8 9
I think Areff's gloss on the quoted stuff is a fair summary. But I'm home from work right now and had hoped to have left it behind me...
Paul
In bocca al Lupo!
IANAL, but from my own experience(1) while you are, indeed, ... Again, this is not a legal opinion, nor legal advice

I wonder if the recent explosion of new patents has changed the way they are (or should be) worded. Patents ... this could be affecting the way that such wording is interpreted and with what prudence we should choose our nomenclature.

Depends on one's definition of "frivolous". Originally, a patent was only awarded for a "thing", a made device which did something original. Ideas were not patentable. When the rules were changed to award patents for algorithms (which are nothing but ideas), chemical compounds, and genetic material, the explosion was on.

dg (domain=ccwebster)
Students: We have free audio pronunciation exercises.
Depends on one's definition of "frivolous". Originally, a patent was only awarded for a "thing", a made device which did something original.

When was that? I'm pretty sure that the three main categories of invention have always been patentable, and one of those is a "method" for doing something (either something that wasn't done before or a method for doing something in a novel way).
Ideas were not patentable. When the rules were changed to award patents for algorithms (which are nothing but ideas), chemical compounds, and genetic material, the explosion was on.[/nq]What's changed is that they've dropped the requirement that a method has to have a describable effect on the physical world. The soundex algorithm was patented in, I believe, 1919, but that was possible because they described it as a way of indexing physical records and keeping a physical index on cards or in a book. Now it would be possible to get a patent for it as a method for indexing and querying a database without having to show that there was activity outside of a computer.

Previously, a method for doing something in a computer might have been "new" and "obvious", but since it didn't require a specific effect on the external world, however slightly, it wasn't "useful". Now the database and data themselves are seen as "things", and querying them and managing them are seen as activities in the world, so something that involves them can be "useful" in its own right.
But (IANAL, etc.) an algorithm itself is still not patentable and we still have to be careful about trying to claim one. It still has to be a method for doing something in particular, and that something has to be motivated as something somebody would want to do. The only change is that the something somebody wants to do may happen inside a computer. But the algorithm itself remains fair game outside of any specific uses mentioned (or arguably implied) by the patent.

Which seems reasonable to me. If there's something that somebody wants to do and somebody invents a novel way of doing it, that's the sort of thing that patents are supposed to cover.(1)

Arguing against software patents as being merely algorithms is a lot like arguing against many other patents as being merely applications of "laws of nature" (also unpatentable), for example that when a current is passed through a piano string it will heat up and expand, thereby altering the pitch. Clearly, that's true, and once it's pointed out, the broad claims of at least one of your patents become obvious.(2) But that doesn't stop your invention from being novel and worthy of a patent. Some of the best patents make you slap your head and say "Of course! Why didn't I think of that?" But the fact is, nobody else had.
(1) Whether the lifetime of a patent is reasonable given the current pace of technological change is a completely different question.

(2) And I'm not even one with ordinary skill in the art.

Evan Kirshenbaum + HP Laboratories >If I may digress momentarily from
1501 Page Mill Road, 1U, MS 1141 >the mainstream of this evening'sPalo Alto, CA 94304 >symposium, I'd like to sing a song

http://www.kirshenbaum.net /
Depends on one's definition of "frivolous". Originally, a patent was only awarded for a "thing", a made device which did something original.

When was that? I'm pretty sure that the three main categories of invention have always been patentable, and one of those is a "method" for doing something (either something that wasn't done before or a method for doing something in a novel way).

You are correct, sir, I believe. As I recall, the original Patent Act back in Tom Jefferson's day used the word "art" in a way that was understood to mean method or process (the current Patent Act uses the word "process", but "method" is more commonly used in process claims in certain fields.
Ideas were not patentable. When the rules were changed to ... ideas), chemical compounds, and genetic material, the explosion was on.

What's changed is that they've dropped the requirement that a method has to have a describable effect on the physical ... to be careful about trying to claim one. It still has to be a method for doing something in particular,

Depends on what you mean. There's still the requirement of "utility", as you say, but this is pretty easy to satisfy. The claimed method itself has to comprise particular things. But it doesn't have to be a method for anything, in a certain sense. It's standard, I think mainly for historical reasons, for claim preambles to have "for" or "of" clauses that recite some sort of statement of purpose, but this is not required (in the US), and it can in fact be dangerous (in the US), depending on what you say, because it's taken (by the PTO) as an admission of prior art (i.e., "a method for doing x" concedes that x has been done before (not that that makes sense)).
It is also dangerous to discuss purposes of the invention in the patent specification (though something like that is apparently required in some countries) for similar reasons.
and that something has to be motivated as something somebody would want to do. The only change is that the ... computer. But the algorithm itself remains fair game outside of any specific uses mentioned (or arguably implied) by the patent.

If I understand you rightly, I'm fairly certain that that's generally incorrect as far as US patent law goes. If you claim "a method of indexing records, comprising: (step 1); (step 2)", then you can stop someone from performing a method comprising (step 1) and (step 2) even if that person is doing it for an entirely different purpose. Similarly, the fact that you have found a new reason for performing steps 1 and 2 doesn't mean you have something patentably distinct over the prior method, although there are some special circumstances where it might be.

It's true that, as I implied above, if you mention specific uses that could end up having narrowing effects on how the claims are construed. However, once we know what (step 1) and (step 2) actually mean, then you can stop someone from doing them regardless of purpose or specific use, IINM.

Steny '08!
Chief Justice Burger said in the leading case Diamond v Chakrabarty :
The relevant legislative history also supports a broad construction. The Patent Act of 1793, authored by Thomas Jefferson, defined statutory subject matter as "any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement (thereof)." Act of Feb. 21, 1793, 1, 1 Stat. 319. The Act embodied Jefferson's philosophy that "ingenuity should receive a liberal encouragement." (447 U.S. 303, 309) 5 Writings of Thomas Jefferson 75-76 (Washington ed.
1871). See Graham v. John Deere Co., 383 U.S. 1, 7 -10 (1966).Subsequent patent statutes in 1836, 1870 and 1874 employed this same broad language. In 1952, when the patent laws were recodified, Congress replaced the word "art" with "process," but otherwise left Jefferson's language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." S. Rep. No. 1979, 82d Cong., 2d Sess.,
5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). 6

I can't recite offhand how much that has been glossed by more recent decisions.

Paul
In bocca al Lupo!
Students: Are you brave enough to let our tutors analyse your pronunciation?
When was that? I'm pretty sure that the three main ... that involves them can be "useful" in its own right.

Chief Justice Burger said in the leading case Diamond v Chakrabarty

: The relevant legislative history also supports a broad construction. The Patent Act of 1793, authored by Thomas Jefferson, defined ... 82d Cong., 2d Sess., 6 (1952). 6 I can't recite offhand how much that has been glossed by morerecent decisions.
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from builders and formulated his celebrated theorem, and I were to work it out, could I patent it? Would I therefore have cause for complaint against anybody who used the principle without my consent?

Mike.
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from builders and formulated his celebrated theorem, and I were to work it out, could I patent it?

No, mainly because it would be seen as a mathematical "law of nature" waiting to be discovered, like the algorithm for converting binary-coded decimal numbers into binary numbers (see Gottschalk v. Benson ).

(Also you wouldn't be able to patent a theorem as such, but that's a side issue.)

Steny '08!
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea ... I were to work it out, could I patent it?

No, mainly because it would be seen as a mathematical "law of nature" waiting to be discovered, like the algorithm ... Gottschalk v. Benson ). (Also you wouldn't be able to patent a theorem as such, but that's a side issue.)

Not to mention that if the builders knew it, then it wouldn't be novel.

Evan Kirshenbaum + HP Laboratories >I value writers such as Fiske.
1501 Page Mill Road, 1U, MS 1141 >They serve as valuable objectPalo Alto, CA 94304 >lessons by showing that the most
Site Hint: Check out our list of pronunciation videos.
OK, while you're here. If Pythagoras hadn't nicked the3-4-5 idea from builders and formulated his celebrated theorem, and I were to work it out, could I patent it? Would I therefore have cause for complaint against anybody who used the principle without my consent?

No, you couldn't patent a 3-4-5 triangle or the theorem behind it because (assuming it is hitherto unknown) it excluded in principle, and also has no industrial utility as a mere geometric figure. But you could patent a method of manufacturing a right-angled object (using that term very loosely) using the principle.
This is a European view, where:
(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
I don't claim to know the latest US position on mathematical methods, but I'd start by expecting it still to be similar.

I am told that Unisys Corporation have patents which are expiring about now (I think their US patent may have expired, but not yet in Europe) for the use of a certain data compression algorithm to form GIF files, but these won't monopolise the algorithm as such. If you can use it for planning the planting of your vegetable patch, go right ahead.
Paul
In bocca al Lupo!
Show more