[DMCA-Activists] Re: [C-FIT_Community] "Tech Art" Requirement Struck Down for BizMethod Patents

[Seth Johnson]

I was also going to say that I thought the dissent was an
indication of the change in outlook I see coming, that that was
the significant aspect of the case for me.  But then I thought
about where the case leaves things, and reached the conclusion I
offered.  The dissent does state your point, and I too hope it
gets appealed and things work out better through the play of the
case.  I still sense the tide turning, even in a negative finding
such as this.


Seth


Malla Pollack wrote:
> 
> By eliminating the "technological arts" requirement, the Board is ignoring
> the U.S. Constitution -- not surprising because administrative law courts
> generally do not reach Constitutional issues.  I do not know the lawyers
> involved in this case, but I yearn for this issue to be appealed to the
> Federal Circuit (which will affirm) and then for an application for
> certiorari.  While the climate in the Supreme Court does not really support
> narrowing patentability, the clash with the language of the Constitution may
> be too hard for the Court to ignore.
> 
> Malla Pollack
> Professor, American Justice School of Law
> Visiting Univ. of Idaho, College of Law
> address@hidden
> 208-885-2017
> 
> 
> -----Original Message-----
> From: address@hidden
> [mailto:address@hidden
> Sent: Monday, October 17, 2005 2:46 PM
> To: address@hidden;
> address@hidden; address@hidden;
> address@hidden; address@hidden; address@hidden;
> address@hidden
> Subject: [C-FIT_Community] "Tech Art" Requirement Struck Down for Biz Method
> Patents
> 
> (I actually think in a perhaps perverse, almost dialectical way,
> this may be good.  The reason being that while business methods
> may remain patentable, we may now see cases argued against
> software patents on the right bases -- not that they are business
> methods, and now, not that insufficient "technology" is involved,
> but rather that they represent math, logic, pure abstraction.
> While they are processes, they cannot in principle be
> distinguished from non-statutory subject matter *even when
> computer programs are not explicitly excluded.*  Or that's the
> notion that comes into my head, anyway . . .  -- Seth)
> 
> > http://patentlaw.typepad.com/patent/2005/10/patent_board_el.html
> 
> Oct 16, 2005
> 
> Patent Board Eliminates "Technological Arts" Requirement For
> Business Method Patents
> 
> Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005).
> 
> In a landmark decision, the Board of Patent Appeals and
> Interferences has issued a precedential opinion eliminating the
> Patent Office procedure of rejecting patents under 35 U.S.C. §
> 101 as outside of the "technological arts"
> 
>     Our determination is that there is currently no judicially
> recognized separate "technological arts" test to determine patent
> eligible subject matter under § 101.  We decline to create one.
> Therefore, it is apparent that the examiner's rejection can not
> be sustained.
> 
> This decision will once again expand the role of business method
> patents by freeing them from being tied to a computer or other
> electronic device.  At the same time, this decision widens the
> gap between the US and many other countries who are still
> debating patentability of software.
> 
> It is unclear at this point whether the PTO solicitor will ask
> the Federal Circuit to review this case.
> 
> The Majority Opinion:
> 
> Lundgren had claimed a "method of compensating a manager" that
> involved several steps of calculating a proper compensation based
> on performance criteria and then transferring payment to the
> manager. The examiner rejected the claims arguing that they were
> "outside the technical arts, namely an economic theory expressed
> as a mathematical algorithm without the disclosure or suggestion
> of a computer, automated means, apparatus of any kind, the
> invention as claimed is found non-statutory."
> 
> A five member panel reviewed this action, and three signed on to
> the per curiam majority opinion that found the claim to "produce
> a useful, concrete, tangible result" without being a "law of
> nature, physical phenomenon or abstract idea."  Regarding the PTO
> "technological arts" test, the majority found that such a test
> does not exist under the law.
> 
> Rejection reversed, there is no judicially recognized
> "technological arts" test for patentability.
> 
> Dissent by Judge Smith:
> 
> Judge Smith dissented, arguing that the "technological arts"
> standard is simply the modern lexical equivalent to the phrase
> "useful arts" found in the US Constitution. He then argued that
> Congress does not have power to pass patent laws that expand
> beyond those "useful arts."
> 
>     While I do not question the power of Congress to pass laws to
> carry out this mandate, whatever law passed by the Congress
> cannot be applied in such a manner as to enlarge the
> constitutional mandate.  Thus, any laws passed by the Congress to
> grant patents should be applied in a manner that is consistent
> with the constitutional mandate.
> 
> The dissent then implicitly calls for the Federal Circuit to
> review the case and explicitly calls fro Congress to "step in and
> clarify the limits of 35 U.S.C. § 101."
> 
> Dissent by Judge Barrett:
> 
> In a 78 page dissent, Judge Barrett suggests a new test under
> section 101 that would require some transformation of physical
> matter.
> 
> Notes:
> 
>     * The BPAI holds its appeals in secret — and the Ex parte
> Lundgren opinion is yet to be officially released by the Board.
> I published this article on the case after receiving copies of
> the opinion from reliable sources. Opinion.v1
> (http://patentlaw.typepad.com/patent/lundgren.doc); Opinion.v2
> (http://patentlaw.typepad.com/patent/Appeal_201_2D92_20CL_2D4.rtf).
>     * Link (http://valmarpro.com/rel_1b.html). Read more about
> Dr. Lundgren.

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