[T]he claim simply tells doctors to: (1) measure (somehow) the current level of the relevant metabolite, (2) use particular (unpatenta­ble) laws of nature (which the claim sets forth) to calculate the current toxicity/inefficacy limits, and (3) reconsider the drug dosage in light of the law. These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field. (page 13 of the opinion)

For more information about the decision, Dennis Crouch has posted an excellent and thorough analysis of the opinion at PatentlyO. On its face, the decision is a clear rejection of broad patent eligibility for claims that apply laws of nature, with particular attention paid to fields associated with medicine. Going deeper, Gene Quinn, of IPWatchdog, has posted a detailed criticism of the decision that argues, in effect, that SCOTUS has applied a false reading of patent law, and in so doing, has “nullified §§102, 103, and 112 [of the Patent Act].” The Mayo ruling may also have implications for the Myriad gene patent litigation – Mr. Crouch at PatentlyO speculates that Myriad (where the Federal Circuit previously ruled that DNA sequences can be patentable subject matter) may be vacated and remanded. Courtenay Brinckerhoff, of Foley & Lardner LLP, notes that “[m]any may view the Court’s decision as upsetting the status quo of patent-eligibility….”

Implicit in the ongoing criticism of the Mayo opinion is the assumption that patents are necessary to the continued vitality of American research industries. This is, at least, arguable – Mark Lemley, in his paper Ignoring Patents, argues that companies in patent-intensive field simply ignore patents. Heidi Williams of MIT, in an excellent working paper, noted that intellectual property (within the empirical context of gene patents) tends to decrease, rather than promote, downstream innovation by researchers.

Many advocates of patent reform point to the “patent thicket” and the inability of companies to efficiently and effectively determine who they may owe royalties to. As a policy issue, health advocates oppose the ability of companies to prevent medical practitioners from using patented treatment methods, or at least charge a premium for their use. The Mayo decision may significantly alter the patent landscape by significantly shrinking the universe of protectable subject matter and imposing stricter review of claims based on natural laws. If it in fact does so, it would be well for reform advocates to keep a close, data-gathering eye on the biotech industry. With fewer patents to rely on, genuine market competition will become a larger factor in the success of the industry, and empirical evidence of growth would help contribute to a more informed public debate on the necessity of IP laws in general.

TechDirt’s article discusses who actually invented email, and why Mr. Ayyadurai’s claim is false. This post focuses on how the dispute illustrates how intellectual property law can throw a wrench in the way people outside of the legal system come to conclusions about issues of creation, authorship, and invention. Responding to comments about its article, the Washington Post issued a “clarification” reading thus:

A number of readers have accurately pointed out that electronic messaging predates V. A. Shiva Ayyadurai’s work in 1978. However, Ayyadurai holds the copyright to the computer program called“email,” establishing him as the creator of the “computer program for [an] electronic mail system” with that name, according to the U.S. Copyright Office.

This is akin to saying “hamburgers predate Ronald McDonald’s work, however, McDonald holds the copyright to a clowning routine, involving the production of hamburgers, called “hamburger,” establishing him as the creator of a ‘clowning routine for placing beef patties between pieces of bread’ with that name.” More than that – it would seem that, at the Washington Post, this reasoning would support a claim that McDonald invented hamburgers.

The TechDirt article notes that the non-clarifying clarification appears to conflate copyrights with patents. The Washington Post, in that case, would be confusing invention with authorship, which is somewhat alarming, coming from a newspaper.

The Post’s description of Mr. Ayyadurai’s stance on intellectual property issues is similarly disheveled. Mr. Ayyadurai says, “I fundamentally do not believe in the patenting of software. It would be like Shakespeare patenting the tragic love story.” He “prefers copyright, which allows others to innovate using the technology.” The first position is relatively uncontroversial, even though it ignores the fact that Shakespeare never could patent the tragic love story, at least not in the United States, and that American courts have, in theory, never embraced software patents that embody nothing more than abstract ideas without concrete application.

The second position, his preference for copyright, is more problematic, because copyright does not protect, or even address, technological innovations. Any usefulness, or utility, described by a copyrighted work must be patented in order to be protected .What copyright protects is individual, singular expression. In other words, it prevents others from appropriating the language an author uses to express a concept or idea. Shakespeare could stop others from copying Romeo’s monologue at Juliet’s balcony, not the idea that a hormonal teenage boy mght do romantic but embarrassing things to woo a girl. Similarly, copyright in software prevents copying, not the use of any innovations described.

The Post also comments that, “by pursuing a copyright on his email work, Ayyadurai opened it up for use, but with credit.” Copyrights are not pursued as patents are; all works of authorship are protected by copyright, whether or not the author registers his work with the Copyright Office, or even places notice of copyright on his work (the © symbol, for instance). Registration is really just a way to ensure that the author is able to sue for money damages should infringement occur. Also, a right to attribution (crediting the author) is not inherent in American copyright law, except in certain cases involving visual artists.

When legal concepts seep into social discourse – here, by underpinning the Post’s assertion that Mr. Ayyadurai invented e-mail, they interact with and modify non-legal concepts. In this case, to have invented something is equated with getting a copyright. This is wrong, as a matter both of law and of plain language. It points to a failure of intellectual property law as a mediating force between creators and the public at large – if no one, not even knowledgeable groups like the Washington Post, really understands what patents, copyrights, and trademarks are, or if misapprehensions such as those illustrated above become common, then how can IP law really incentivize creation and disincentivize misappropriation? It can’t – it simply breeds costly and inefficient litigation that settles specific cases, without clarifying the law for other parties. Shouldn’t laws that encourage technology, literature, and progress in general do better than that?

Teaching Assistant positions are still avalible for the 2009 CASRIP Summer Institute July 16-31, 2009.   I know several people who have TA’ed and CASRIP it is a great way to improve your IP skillz and meet other IP geeks from around the world.

Here is more about CASRIP:

The CASRIP Summer Institute offers education and training in the fundamentals of intellectual property law with a focus on comparative patent law and technology protection.  The Summer Institute provides attorneys, engineers, patent agents, and licensing department staff with a concise and reasonably priced means of acquiring an understanding of U.S. intellectual property law and practice.  Because Summer Institute participants typically come from Japan, Korea, Europe and elsewhere, there are unique opportunities for networking with international practitioners of intellectual property law.

Responsibilities include

• Preparing for class and meeting with a pre-assigned group of Institute participants to instruct them on the day’s material
• Attending all lectures
• Preparing notes from the lectures
• Assisting with miscellaneous tasks necessary to prepare for the Summer Institute (e.g. greeting participants, setting out lunches, handing out conference materials, etc.)

Benefits include:

• Attending the CASRIP Summer Institute and High Technology Summit free of charge ($5,500 tuition waiver)
• A $500 stipend
• Opportunities to meet and network with local and international IP attorneys, business people, scholars and practitioners
• Invitation to social events including receptions hosted by local law firms and a Mariner’s game

If you are interested in applying to become a CASRIP Summer Institute Teaching Assistant, please submit a cover letter, resume and letter of recommendation

To: Signe Naeve

By: February 27, 2009 ( new deadline). February 25th 2009! (Edited: February 19th)

Applicants may leave materials in her mail box University of Washington or send them to:

Signe Naeve
William Gates Hall
Box 353020, Seattle, WA 98195-3020

Please address any questions you may have to Ms. Naeve at bruns <at> u.washington.edu

Note: the curriculum is a bit on the protectionist side of things, from what I have heard.  This is not an FC project, but it might be a good place to share an FC philosophy.  Naeve is open to hearing other perspectives, she was my copyright professor last fall and let us have some very interesting discussions in class.

It is with anticipation that I receive the Ocean Tomo auction catalogs, looking for surprises. There are three lots of patents directed towards Social Networking. CIS speaker and Harvard law prof Jonathan Zittrain ( a great speaker) is the first named inventor of two patents (6,998,984 and 7,324,000) at the March auction. The patents are entitled, “State adaptation devices and methods for wireless communications”, but the catalog summarizes them as a “Non-verbal Wireless Communication System.” One of the claims of the ‘000 patent provides for

“A communications system comprising: a first bracelet for a user to wear that can sense a contraction when squeezed around the user, and including a transmitter for wirelessly transmitting a signal indicating that the bracelet has been squeezed; the first bracelet further including a receiver for receiving a signal and for contracting around the user in response to the received signal.”

Lot 41 (US 7,483,946 and 6,963,900) should interest LinkedIn, FaceBook, MySpace and similar social networking sites for patents covering facilitating meetings or events between two or more people. There are recent nascent efforts of potential licensing targets banding together to acquire select patents, thereby inoculating themselves from potential litigation. This would be an opportunity for LinkedIn et al. to acquire the patents and form a pool.

License Note: Work quoted from the Stanford Center for Fair Use is under a Creative Commmons BY License

Of these patents the social networking ones are insane here is 6,963,900

Methods and systems for assisting individuals (101) arrange meetings such as networking meeting with other individuals (101) at a specified time (or within a specified time range) and/or at a specified place (or within a specified geographic region). More specifically, methods and systems for allowing individuals (110) to post an invitation to for a meeting on an on-line network and for allowing one or more other individuals (101) to accept such invitation.

Is this patent even valid under Bilski? The patent is a process patent that is only loosely connected to any specific technology. Is this patent novel? I can not disagree with Soffer more, social networking sites should not invest in software patents they should fight them.  Even if the patent is valid it is clearly bad for competition and innovation. This patent should be reexamined, stay away!

I am waiting to comment on the JZ patents I need to read them more carefully.

Please join FSF and fight to end software patents.

Other coverage from Tech Dirt:

http://techdirt.com/articles/20080626/0203581527.shtml

Washington State Patent Law Association (WSPLA) filed a brief defending Bilski and asking for the CAFA to reaffirm and rewrite State Street Bank to be consistent with recent SC rulings. This brief is aimed at merely expanding subject matter under Section 101.

A “process” entails an act or a series of acts performed upon a subject matter, or a mode of treatment of certain materials to produce a given result. When considered as a whole, a process must be new and useful in that it must be manmade and not exist in nature, and it must be practically useful. Such a process does not have to result in a physical transformation or be tied to a machine, although such provisions are indicator of patent eligibility. -WSPLA Summary of Argument

This wide reading of patent law ensures that lawyers can patent any “use” process, but does not provide any balance for the public interest. Additionally the WSPLA wants to extend Diamond v. Dieher to provide support for patenting mathematical formulas:

the use of the Arrhenius equation in the claim was not an unapplied mathematical formula; rather, it was part of an application to cure rubber. Second, even though a computer wasn’t needed in the process of curing natural or synthetic rubber, if the use of the computer incorporated in the claimed process significantly lessened the possibility of overcuring or undercuring, the process as a whole did not become unpatentable subject matter. Diehr, 450. WSPLA Brief at 8.

Misreadings of cases including Diamond v. Diehr have expanded the scope of patent law to include mathematical formulas when they are used with computers. If we can not use mathematical formulas with computers, or calculators which is what computers are essentially, then where can we use them? The idea patenting mathematical formulas by simply adding a step that runs the formula on a computer is ridiculous at best.

On the other side of the patent debate, Free Software Foundation’s End software patents campaign filed a brief arguing that Bilski is the perfect opportunity for the CAFC to examine software patents:

The conclusion of Diamond v. Diehr, 450 U.S. 175 (1981)
directly reiterated the above, while on the other hand
acknowledging that bona fide patent-eligible inventions may
include a software component. It is well worth reprinting the
bulk of the conclusion:
. . . . A mathematical formula as such is not accorded
the protection of our patent laws, Gottschalk v. Benson, 409
U.S. 63 (1972), and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular
technological environment. Parker v. Flook, 437 U.S. 584
(1978). Similarly, insignificant postsolution activity will not
transform an unpatentable principle into a patentable
process. Ibid. To hold otherwise would allow a competent
draftsman to evade the recognized limitations on the type of
subject matter eligible for patent protection. On the other
hand, when a claim containing a mathematical formula
implements or applies that formula in a structure or process
which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e. g.,
transforming or reducing an article to a different state or
thing), then the claim satisfies the requirements of § 101. . .
.
Id. at 191-92 (notes omitted, emphasis added).
In all cases, the Court expressed disdain for allowing
patents on software loaded onto a standard computer, repeatedly
referring to it as an “insignificant,” “conventional or obvious”
modification of the base formula. ESP Bried at 6. (emphasis added)

I agree with FSF’s reading of Diamond v. Deihr which severely limits all software patents. Running a mathematical formula on a computer is obvious. Computers do calculations better than people. I hope to see the Supreme Court take up this issue along with the State Street Bank precedence, ruling that if a mathematical formula or process is not patentable without a computer then merely adding a computer to do the same thing more efficiently does not create patentable subject matter or overcome the obviousness requirement.

Related links:

Washington State Patent Law Blog on the Washington Patent Lawyers Brief

Patently-O’s list of 30 In re Bilski briefs

End Software Patents Brief

Washington State Patent Lawyers Association Brief

I am very pleased to see the ACLU has joined the patent fight with a first amendment argument against business methods patents. Patents have grown over the past few years to allow many new forms of questionable inventions. One of the key case that expanded patents is State Street Bank, which allowed business methods to be patented. State Street Bank was granted a patent for basically adding up finical numbers with a spreadsheet, this was not a real invention but merely a way to seek rents off others for doing something obvious. In re Bilski is an opportunity for the federal circuit to reverse this ridiculously anticompetitive practice.

More from the ACLU’s Press Release:

Introducing a rare argument applying the First Amendment to patent law, the American Civil Liberties Union filed a friend of the court brief today urging a federal court to uphold the denial of a patent that would, if awarded, violate freedom of speech. In the brief, the ACLU argues that Bernard L. Bilski is seeking a patent for an abstract idea, and that abstract ideas are not patentable under the First Amendment.

“The court must ensure that any test it uses in determining whether to award a patent is in line with the Constitution,” said Christopher Hansen, senior staff attorney with the ACLU First Amendment Working Group, who filed the brief. “If the government had the authority to grant exclusive rights to an idea, the fundamental purpose of the First Amendment – to protect an individual’s right to thought and expression – would be rendered meaningless.”

I hope this is the beginning of the first amendment being used to protect the public from bad patents. I encourage the ACLU to look into software patents more closely as many of the arguments from the amicus brief could be used to challenge the abstract non-enabled software patents that are strangling innovation and punishing companies that bring new ideas to the market.

Read More:

ACLU Bilski Amicus

ACLU’s official press release

Disclaimer: I am a proud member of the ACLU and my wife works for their Seattle office.