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Logical Processes, and observations on 'bright line' tests | 179 comments | Create New Account
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Logical Processes, and observations on 'bright line' tests
Authored by: macliam on Sunday, March 17 2013 @ 07:00 AM EDT

I intended 'logical' to be interpreted in a sense related to logic, specifically formal logic, and indeed classical first order logic. Most of the theorems of mathematics could in principle be represented as theorems in first order logic following from the Zermelo-Fraenkel axioms. I would suggest that what the Zermelo-Fraenkel axioms add to first order logic is a set of basic principles for handling infinite sets, such as the sets of integers and real numbers. Thus classical logic and predicate calculus represent principles that are even more fundamental than mathematics per se, though mathematicians would probably consider them a subset of mathematics. I cannot think of any adjective other than logical that could serve the process of indicating the fundamental nature of the principles involved.

In any case, there is no prospect of anything like this being put to district judges and juries to interpret. The Supreme Court made it plain that the judicial exceptions are for "laws of nature", "natural phenomena" and "abstract ideas" (and possibly "products of nature" as decided in the forthcoming Myriad case), and that they are not minded to extend this list by further exceptions for "business methods" and, by extension, "mathematical algorithms" and the like. Moreover neither the "machine or transformation" test nor any other sort of bright-line dispositive test is acceptable for determining whether or not a claimed invention falls within these categories of excluded subject matter. At most, such tests are "useful clues" or "investigative tools".

If the analysis of the nature of computer-related processes has relevance then the relevance surely lies in attempting to clarify the issues involved. And if something useful emerges, it may form a good basis for legal briefs to the Supreme Court or Federal Circuit. The printing press example is a particularly good one. But if part of the purpose were to devise a dispositive test that judges and juries could use in order to determine whether or not a claimed invention is patent-eligible, then that exercise would be misconceived as contradicting the letter and spirit of the Supreme Court judgement in Bilski v. Kappos. As the PTO have told the Federal Circuit, such "bright line" tests not grounded in the wording of the statute are not in themselves acceptable as a means of separating patent-eligible and patent-ineligible subject matter.

And any tests will be determined by the Federal Circuit through case law, as and when they come to terms with the principles set out by the Supreme Court and develop their jurisprudence in accordince with principles set out in Bilski. Mayo, the forthcoming Myriad case that is currently being briefed before the Supreme Court, and probably some future computer-related case, maybe arising out of CLS v. Alice or Ultramercial v. Wildtangent or any other of the cases currently before the Federal Circuit relating to patent-eligibility of computer-related subject matter under Section 101 of the patent act. And the Patent Office and judges and juries will then follow whatever principles and procedures that the Federal Circuit establishes.

In particular, suppose that the following were proposed as a definitive bright-line test:

Claims reciting software will be patentable when they claim a referent which is a patent-eligible invention.

Then it is surely a sitting duck for patent attorneys who will gleefully set about writing patent applications on fundamental ideas and basic principles that are filled with claims to "referents that are patent-eligible inventions" but that neverthess less in practice claim masses of routine everyday activity "widely practised within the art" or prempt most if not all useful applications of scientific discoveries and mathematical breakthroughs. Don't underestimate the ingenuity of patent attorneys when they draft claims that fall within acknowledged "safe harbors"!

[ Reply to This | Parent | # ]

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