Q&A: Intellectual Property & the Law

[g6civcx]

Disclaimer: everybody is strongly encouraged to consult with legal counsel. I do not represent you, and I do not understand your situation. Therefore, Zilvia and the author(s) are not responsible for the contents or misuse thereof. Always verify information with credible sources.
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I'm pulling out all the stops for Zilvia on this one. I received quite a few PMs about this topic so I decided to make a thread for all to benefit. As part of my pro bono, public outreach program :), I will take any questions about intellectual property that you may have but never had the opportunity the ask.

Keep the disclaimer in mind. Also keep in mind that a preliminary consultation with a qualified attorney will cost you a lot of money as well.

Please understand that while I can tell you what a law says, it is the courts that will actually determine what the law means. Some laws may not make sense, but they're meant to be taken in context.

Take this opportunity to ask me anything. If I don't know, I'll direct you to resources where you can find the answer.

Just please don't ask if any particular invention is patentable. The answer is I don't know. No one knows other than the Examiner issuing the patent. Any and all other questions are always welcome.


As for my background, I work for one of the largest law firm in the country. Out of respect for my clients, I would prefer to stay anonymous for now. Otherwise, I work in one of the most highly litigated areas of patent law. I encourage others with expertise to participate. I know you're out there :yum:

Questions and positive comments are always welcome. Posters of negative comments will receive negative reputations and be reported to the moderators. If you have nothing constructive to add, please go post in another thread that's more to your liking. This is an educational thread to benefit the community.


To start off, a great resource is the US Patent & Trademark Office Web site: http://www.uspto.gov


Now, does anybody have any questions? I know the people who PM'ed me do :mepoke:

[aznpoopy]

holy shit! i knew you couldn't just be a regular d00d after all that stuff you wrote in the other thread.

i'm also thinking about going into IP law. i'm taking Copyright and Trademark and Patent Law this semester. pretty interesting courses! i'm also on IPLS and law review. hopefully it helps me out. still looking for a job this summer. Rutger's OCI program kind of blows.

do you practice ip litigation or ip prosecution? how do you like it so far?

[usdm180sx]

1. Are you a lawyer?

[Tenchuu]

2. if so could you sue a guy for me that i have full name and maby a current address that stole about 5G from me. or would you do it for 2G?

[g6civcx]

i'm also thinking about going into IP law. i'm taking Copyright and Trademark and Patent Law this semester. pretty interesting courses! i'm also on IPLS and law review. hopefully it helps me out. still looking for a job this summer. Rutger's OCI program kind of blows.

do you practice ip litigation or ip prosecution? how do you like it so far?

In reverse order:

* It's great. It's definitely not for everyone though. You really have to enjoy what you do.

* I do not do litigation, only prosecution.

Trademark is a totally different animal. I just don't find the subject matter itself that interesting.

If you do decide to become a patent attorney, please keep several things in mind:

- Never ever write a Jepson claim, unless you know exactly what you're doing.

- Never ever let an informality get into your application. Trust me. It will not be good for your case.

- Never ever let a 101 or 112 issue get into your claims. The less examining time you waste on those things, the more they can focus on art and give you a strong prosecution history.

1. Are you a lawyer?

No.

2. if so could you sue a guy for me that i have full name and maby a current address that stole about 5G from me. or would you do it for 2G?

Please allow me to explain. Intellectual property = patent, trademark, copyright, and trade secret. Intellectual = idea.

$ = real property. You need a civil litigation attorney. I recommend you look in the phonebook for one that knows your area well.

Read this for a brief explanation: http://en.wikipedia.org/wiki/Intellectual_property

[drift freaq]

well if you want to get into intellectual property rights then its not all about patents and trademarks. Its also about Copyright. That is the biggest stickler on the internet because quite a few internet denizens seem to think when it comes to music that if its there to be downloaded then its legal. Not only that but they feel they have a infalliable right to rip music because its being sold by record labels. That music is copyrighted i.e. intellectual property. Most people justify ripping it based on there assumed fact that the label is ripping off bands. Though the bands signed contracts agreeing to this stuff being fair or not. When you rip music your ripping off the band as well as the label. Now some people seem to think that intellectual property rights are not as valid as say owning a set of wheels per the law your dead wrong. Ripping someones music is like stealing someones wheels and there are no rationalizations that are even ethical as far as that is concerned . You rip music your stealing. Now this does involve Zilvia because they are people here who post places to rip and whatnot and try to distribute ripped music through here. Now I assuming that is why the thread starter started the thread. In case any of you are wondering why I wrote this dissertation about the subject its because I am a musican/composer. Music is my heart and soul and when you rip music your stealing someones art. I would not steal a painting do not steal music.
I have said enough.

[g6civcx]

well if you want to get into intellectual property rights then its not all about patents and trademarks. Its also about Copyright. That is the biggest stickler on the internet because quite a few internet denizens seem to think when it comes to music that if its there to be downloaded then its legal. Not only that but they feel they have a infalliable right to rip music because its being sold by record labels. That music is copyrighted i.e. intellectual property. Most people justify ripping it based on there assumed fact that the label is ripping off bands. Though the bands signed contracts agreeing to this stuff being fair or not. When you rip music your ripping off the band as well as the label. Now some people seem to think that intellectual property rights are not as valid as say owning a set of wheels per the law your dead wrong. Ripping someones music is like stealing someones wheels and there are no rationalizations that are even ethical as far as that is concerned . You rip music your stealing. Now this does involve Zilvia because they are people here who post places to rip and whatnot and try to distribute ripped music through here. Now I assuming that is why the thread starter started the thread. In case any of you are wondering why I wrote this dissertation about the subject its because I am a musican/composer. Music is my heart and soul and when you rip music your stealing someones art. I would not steal a painting do not steal music.
I have said enough.

Everything said above is true. I don't rip copyrighted materials nor do I recommend that anyone does it.


Now I assuming that is why the thread starter started the thread

I started this thread to educate people by answering their questions.

[drift freaq]

well if you want to get into intellectual property rights then its not all about patents and trademarks. Its also about Copyright. That is the biggest stickler on the internet because quite a few internet denizens seem to think when it comes to music that if its there to be downloaded then its legal. Not only that but they feel they have a infalliable right to rip music because its being sold by record labels. That music is copyrighted i.e. intellectual property. Most people justify ripping it based on there assumed fact that the label is ripping off bands. Though the bands signed contracts agreeing to this stuff being fair or not. When you rip music your ripping off the band as well as the label. Now some people seem to think that intellectual property rights are not as valid as say owning a set of wheels per the law your dead wrong. Ripping someones music is like stealing someones wheels and there are no rationalizations that are even ethical as far as that is concerned . You rip music your stealing. Now this does involve Zilvia because they are people here who post places to rip and whatnot and try to distribute ripped music through here. Now I assuming that is why the thread starter started the thread. In case any of you are wondering why I wrote this dissertation about the subject its because I am a musican/composer. Music is my heart and soul and when you rip music your stealing someones art. I would not steal a painting do not steal music.
I have said enough.

[mrmephistopheles]

Now this does involve Zilvia because they are people here who post places to rip and whatnot and try to distribute ripped music through here.

???:wtf:???
We don't tolerate piracy here, how can you say that?
If you see someone post shit like that report it.

[g6civcx]

???:wtf:???
We don't tolerate piracy here, how can you say that?
If you see someone post shit like that report it.

Please report illegal activities to the moderators so they can deal with it. :spank:

[LB.Motoring]

hmmmm, this is a great thread, I might need help with how to go about taking care of someone legaly, but its off topic of int. prop. law.. Its more involving how I should go about taking care of a guy who did work for me, and hes trying to screw me over... thanks!

Damn I allways knew you were Superman :keke:
Hiding in your clark kent zilvia suit!

[g6civcx]

I might need help with how to go about taking care of someone legaly, but its off topic of int. prop. law.. Its more involving how I should go about taking care of a guy who did work for me, and hes trying to screw me over...

Same comment to you as the person above. You need an attorney to represent you. You sue him for breach of contract and whatever else you have going on. It gets expensive real quick so make sure you're ready.

[SochBAT]

I concur. I was about to go and get legal actions against someone on the forums, but i figured 200 is really nothing to try to win back.

[g6civcx]

I concur. I was about to go and get legal actions against someone on the forums, but i figured 200 is really nothing to try to win back.

You can try representing yourself and suing them in small claims court, but you will have to pay court cost and take time off. It's very common for the defendant to hide and not even show up for court.

I wouldn't do it because it wastes time. You can try if you want the experience.

[g6civcx]

Some great resources to look up if you ever wanted to:

http://www.uspto.gov/web/patents/legis.htm
http://en.wikipedia.org/wiki/Patent

I will refer to the USPTO as "the Office" from hereon.

The link to the Office's site contains the four (4) single most important pieces of laws and rules for patent:

1) Title 35 of the United States Code (commonly referred to as 35 U.S.C.)
2) Title 37 of the Code of Federal Regulations (37 C.F.R.)
3) Manual of Patent Examing Procedures (MPEP)
4) The American Inventors Protection Act of 1999 (AIPA)

If you can understand and apply everything contained in these 4 items, you will be extremely extremely successful.

The wiki also has some great information, but keep in mind that with wiki's, anyone may update anything any time so there's no guarantee that the information will be accurate.

[LB.Motoring]

Good stufff, I will look into it =]

[g6civcx]

A patent is a set of exclusive rights granted by a state to a patentee (the inventor or assignee) for a fixed period of time in exchange for the regulated, public disclosure of certain details of a device, method, process or composition of matter (substance) (known as an invention) which is new, inventive, and useful or industrially applicable.

Let's look at what a patent is. Conceptually, a patent is a contract between you and the government. You tell the government what your invention is and that gets published. The government in return grants you exclusive rights for a period of time to profit from your invention.

The whole idea is to get people to tell the public their ideas. Technology would be nowhere if you couldn't learn from what other people did before. We would be reinventing the wheel.

Historically, the patent system was one of the few things that made it into the Constitution without debate. Everyone recognized the importance of getting ideas out of people's head and onto paper so future generations can further develop the technology.

Keep in mind that your disclosure must be complete. If you try to hide something, it's illegal. Personally, I don't understand why some people are so secretive about their patent. It's public disclosure. If you want to keep your idea a secret, don't file for a patent. But that's my personal opinion and I'll keep that out of here.


There is also a huge misconception I've seen on this board and everywhere else as well. There is no international patent. Each country has their own system. It's confusing, but that's how it is. So your Japanese patents have no value in the US, and vice versa.

The best you can do is file in every country you want protection in. There is a simplified process to bring your application to other countries, but you still have to file in each country separately.


Traditionally, all patents must be novel, nonobvious, and statutory. I don't like the terminology the wiki uses because it's confusing.

"novel" means it's never been done before.

"nonobvious" means it's not an obvious variation of something that already exists. There is a legal test to determine obviousness, but I won't get into that right now.

"statutory" means it must comply with every single law, rule, and guideline I posted above.


Traditionally, patents cover processes, machines, manufactures, and compositions of matter. Each category has their own definition, and sometimes it's difficult to classify an invention.

Recently, there was a case called State Street Bank & Trust Company v. Signature Financial Group, Inc. This case created a judicial exception for a new class of invention called "business methods". This is a relatively new area of patent law and it's very controversial.

More info here: http://en.wikipedia.org/wiki/State_Street_Bank_&_Trust_Company_v._Signature_Financial_Group,_Inc.


That's pretty much what a patent is. If your invention is new, not obvious, and statutory, you're eligible for patent protection. The patent means no one can use or sell your invention without your consent.


The difference between a patent and a trademark and a copyright is that a patent protects an invention, what the invention is, what the invention does, and what the invention looks like.

A trademark protects a company's logo and design so other people can't sell you fake stuff. A trademark doesn't identify a product. It just identifies the manufacturer. Wiki is not correct on some definitions, but I won't get into that: http://en.wikipedia.org/wiki/Trademark

Copyrights are stuff like art, music, writing, poetry, etc. Stuff that you can get in the library: http://en.wikipedia.org/wiki/Copyright

A trade secret is stuff that you want to keep secret. You don't get any protection if someone duplicates your idea though. http://en.wikipedia.org/wiki/Trade_secret

[aznpoopy]

i have a question for you.

this came up in a hypothetical in our textbook. the hypothetical is a trade secret hypothetical, but it has a little patent question tacked on at the end.

facts: guy owns a bakery with a proprietary recipe for chocolate chip cookies. the recipe substitutes many common ingredients for not-so-common ones and then has a special cooking formula that involves cooking the cookie at various temperatures for various times. the result is a cookie that is hard on the outside, soft on the inside, and has 200 less calories than other commonly chocolate chip cookies on the market. nobody else in the world has this recipe.

question: is the recipe eligible for patent protection?

i suppose they could seek protection as a new 'process' or perhaps a new 'composition of matter?' i do not know if a new recipe for chocolate chip cookies could be considered 'useful.' finally, i don't really see recipes as innovation in the 'technical arts,' not to offend anyone who is into cooking.

[drift freaq]

???:wtf:???
We don't tolerate piracy here, how can you say that?
If you see someone post shit like that report it.

Nothing against Zilvia kev, though in the past I have seen it. Yes usually the thread gets locked but I have even gotten into ethical discussion in one of those threads with forum members in the past posting looking for rips. This was quite awhile ago. Though I don't remember the particular thread getting locked, it also was before you were a moderator. I know you are ever vigilant about that stuff as is Philip and Thatguy.
There was a thread in off topic recently about music downloading and seeing as I try to stay away from people who condone ripping music I ignored it. In fact the thread title was very suggestive of ripping. Now I was busy at the time when I saw it so I moved on. Sometimes I get busy and cannot report everything I see other times I am on top of the shit. I am human. Though I will report most total abuses of the forum when I see them, you know that.

I was not so much attacking Zilvia either, as I was stating something I have seen and known to exist in the past. There are forum members that condone ripping music and have even stated it. Like most people these people rarely read forum rules. Nor do they realize that so much as admitting it on the forum brings heat to the forum. If they were even that wise maybe they would not be ripping in the first place.

[theicecreamdan]

Is what we post on internet forums "our" work?

If zilvia is making money off of putting those new ads into my text, should it pay me?

disclaimer: I don't want zilvia's money.

[g6civcx]

i have a question for you.

this came up in a hypothetical in our textbook. the hypothetical is a trade secret hypothetical, but it has a little patent question tacked on at the end.

facts: guy owns a bakery with a proprietary recipe for chocolate chip cookies. the recipe substitutes many common ingredients for not-so-common ones and then has a special cooking formula that involves cooking the cookie at various temperatures for various times. the result is a cookie that is hard on the outside, soft on the inside, and has 200 less calories than other commonly chocolate chip cookies on the market. nobody else in the world has this recipe.

question: is the recipe eligible for patent protection?

i suppose they could seek protection as a new 'process' or perhaps a new 'composition of matter?' i do not know if a new recipe for chocolate chip cookies could be considered 'useful.' finally, i don't really see recipes as innovation in the 'technical arts,' not to offend anyone who is into cooking.

Good question!

At the very least, all patent-eligible subject matter must pass the 3 requirements I said above: novel, nonobvious, and statutory. Let's break it down.


If you want to give them a smart-ass answer, tell them it all really depends on how the invention is claimed. I can't really say without seeing the claims because the inventor can claim it all kinds of different ways.


At the very least, all patentable subject matter must comply with 35 U.S.C. 101, 102, 103, and 112. There are more, as you know.


The 101 analysis is very very difficult. 101's interpretation will change as pending court cases get resolved.

First, go back and tell your professors that they are all wrong. Patent law is a living and breathing thing. By the time it makes it into the books it's obselete.

Read this: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf

Then print it out and give it to your professor. Pay attention to the appendices which address obselete tests ("not in technological art" is one of them).

The check for 101 compliance varies greatly from person to person. Conceptually, 101 has 2 distinct requirements.

1 - Statutory category of invention - process, machine, manufacture, composition of matter. If your claim is not one of those, then you look towards judicial exception (abstract idea class of invention). Check the link for complete description.

2 - Utility - credible, specific, substantial, etc. Must produce physical transformation, perform concrete, useful (substantial, specific, credible), tangible result, etc. Again consult the link for description.

Assuming you're claiming the cookie, it could be an apparatus claim or composition of matter claim. You can also claim the baking process, which would be a process claim, or product-by-process claim. You could also claim a method of baking and serving, which would be a business method claim.

Assume the utility is easily established because it produces something that's a concrete, useful, tangible result.

Usually food falls under compositions of matter. Useful = utility. It's not useful as what you think it means. Useful = is it credible? Time machines are not useful because they lack utility, i.e. lacks concrete, useful, tangible results. Although time machines would be incredibly useful if you could build one, they have no utility under 101.

Rose-colored toilet paper is absolutely useless, but has utility according to 101.

I know it's confusing as hell, and even experienced examiners do not understand. It follows that your professors will lack understanding as well. It's normal and is par for the course. Also, every technology has different standards for 101 requirements. You need to have experience in your field of invention.



102 and 103 are pretty standard.

102 addresses the novelty aspect. Paragraphs a, b, and e are the relevant ones. Typically as long as every element of the claims has not been on sale, used, published, or applied for patent before your priority date, you're good to go. The bar for 102 is high because every element must be anticipated from the reference.


103 is a little more complicated. You test for nonobviousness by looking at the 4-prong Graham v. Deere analysis: http://en.wikipedia.org/wiki/Graham_et_al._v._John_Deere_Co._of_Kansas_City_et_ al.

Find the closest reference. This is your primary reference. Analyze what the primary reference teaches and what it's lacking.

Then go find analogous art from the same field of invention, or from class of inventions that solve the same problem. Identify the missing features from the primary reference and how it's taught in the secondary reference(s).

Resolve the level of ordinary skill in the art by analyzing why Mr. Person of Ordinary Skill in the Art (Mr. POOSITA) would know, and why they would combine the references.

Then resolve secondary considerations, such as commercial success, long-felt needs, etc. There are some errors in the wiki so don't rely on that.


Finally, you need to comply with 112. There are 2 important sections:

1st paragraph - enablement, best mode, written description. There are tests for each criteria:

enablement - Mr. POOSITA must know how to make and use your invention from the disclosure w/o undue experimentation

best mode - must not be concealed. You have to tell them the best mode to make and use the invention in the spec. This rejection is rare.

written description - spec must provide support for claimed invention. This is very important. New matter objections will stop your prosecution dead in its track even if you have patentable subject matter.


Make sure you understand the difference between enablement and written description. Most attorneys do not understand. Enablement means you talked about it, but didn't tell us how to build it. Written description means you didn't talk about it at all. There is a difference, and you overcome the 2 types of rejection differently.


Finally, the most important one and the one most overlooked by attorney is 112 2nd paragraph. Your claim interpretation must be definite, free from ambiguity, no indefinite language, has proper antecedent basis, so on and so forth.

You can tell how sloppy the attorney is by how many 112 2nd issues they have.


So the short answer is that the recipe may be eligible for patent protection. It depends on how the claim is structured (process, product, product-by-process, etc.).


Confused yet? :yum:

[g6civcx]

Nothing against Zilvia kev, though in the past I have seen it. Yes usually the thread gets locked but I have even gotten into ethical discussion in one of those threads with forum members in the past posting looking for rips. This was quite awhile ago. Though I don't remember the particular thread getting locked, it also was before you were a moderator. I know you are ever vigilant about that stuff as is Philip and Thatguy.
There was a thread in off topic recently about music downloading and seeing as I try to stay away from people who condone ripping music I ignored it. In fact the thread title was very suggestive of ripping. Now I was busy at the time when I saw it so I moved on. Sometimes I get busy and cannot report everything I see other times I am on top of the shit. I am human. Though I will report most total abuses of the forum when I see them, you know that.

I was not so much attacking Zilvia either, as I was stating something I have seen and known to exist in the past. There are forum members that condone ripping music and have even stated it. Like most people these people rarely read forum rules. Nor do they realize that so much as admitting it on the forum brings heat to the forum. If they were even that wise maybe they would not be ripping in the first place.

I agree with everything you said. Just keep in mind that "fair use" is still allowed: http://en.wikipedia.org/wiki/Fair_use

But I think most people posting about it online is talking about copyright infringement.

Also keep in mind that Zilvia may be responsible for illegal activities that take place on the forums. I hope the mods are vigilant and take care of issues before they come up.

This is the same issue I brought up with the Zilvia monkey. We're opening the door for huge liabilitiy issues.

[g6civcx]

Is what we post on internet forums "our" work?

If zilvia is making money off of putting those new ads into my text, should it pay me?

disclaimer: I don't want zilvia's money.

Everything you write any time anywhere is eligible for copyright protection. Copyright protection is afforded to you at the time you create the work. Whether you can enforce it is a different story.

Same comment for you as the person above. http://en.wikipedia.org/wiki/Fair_use

People are free to use your work under fair use, especially if you publish it. Posting on Zilvia is a form of publication.

I don't know if Zilvia has to pay you, because you're using the forum to publish your work. You'll have to fight it out in court to see who the copyrightholder is, and if such use constitutes fair use.

[aznpoopy]

That was an incredibly detailed answer. I read it over but I don't actually understand it all. I am going to have to study it a bit more. The Judge I worked for over the summer said much the same thing about Law School vs. the Courtroom. Apparently Law Professors and the actual field of Law live in two seperate dimensions.

Thanks for the awesome answer, though. The concepts are just starting to crystalize in my head. Hopefully I'll understand it better at the end of my cram session. @[email protected]

But I think most people posting about it online is talking about copyright infringement.

Also keep in mind that Zilvia may be responsible for illegal activities that take place on the forums. I hope the mods are vigilant and take care of issues before they come up.

I actually just did a paper on this for internet law, in the context of online defamation and service provider and/or end-user liability in New Jersey specifically.

Service providers (aka Zilvia.net) will rarely be held liable for the comments (or activities) made by users because user activity is often so high it would be unreasonable to expect the forum operator and his staff (moderators) to patrol each and every post and edit for content.

Nor will liability be imposed if moderators make a good faith effort to monitor the content of the forum. Section 230 of the Communcations Cecency Act nearly immunizes service providers for comments posted on forums and blogs and whatnot; because Congress thinks good faith efforts to patrol internet content should not be discouraged.

So when can a service provider be held liable for the actions of its end-users? Only when it is clear that they 1) knew what was going on and 2) purposely turned a blind eye or 3) encouraged the illicit activity. Donato v. Moldow, 865 A.2d 711 (N.J. Super. Ct. App. Div. 2005) (holding that the owner of an internet forum was not responsible for defamatory statements made on the forum even though he controlled the forum by banning users, editing posts, and commenting with approval and disapproval on ceratin posts). Although this standard is used for online defamation, I believe it can be used as a parallel for distribution of illegal copyrighted material over online forums.

On the other hand, e1 of CDA 230 says 230 has "no effect on intellectual property law." I wonder if that means forums would be under strict secondary liability for enabling the illict sharing of copyrighted material... i.e. keep the mp3s off zilvia please. I like this forum.

disclaimer: not intended as legal advice. not necessarily an accurate statement of the law. this post is merely the opinion of this particular authoring end-user. ;)

[g6civcx]

That was an incredibly detailed answer. I read it over but I don't actually understand it all. I am going to have to study it a bit more. The Judge I worked for over the summer said much the same thing about Law School vs. the Courtroom. Apparently Law Professors and the actual field of Law live in two seperate dimensions.

Thanks for the awesome answer, though. The concepts are just starting to crystalize in my head. Hopefully I'll understand it better at the end of my cram session. @[email protected]



I actually just did a paper on this for internet law, in the context of online defamation and service provider and/or end-user liability in New Jersey specifically.

Service providers (aka Zilvia.net) will rarely be held liable for the comments (or activities) made by users because user activity is often so high it would be unreasonable to expect the forum operator and his staff (moderators) to patrol each and every post and edit for content.

Nor will liability be imposed if moderators make a good faith effort to monitor the content of the forum. Section 230 of the Communcations Cecency Act nearly immunizes service providers for comments posted on forums and blogs and whatnot; because Congress thinks good faith efforts to patrol internet content should not be discouraged.

So when can a service provider be held liable for the actions of its end-users? Only when it is clear that they 1) knew what was going on and 2) purposely turned a blind eye or 3) encouraged the illicit activity. Donato v. Moldow, 865 A.2d 711 (N.J. Super. Ct. App. Div. 2005) (holding that the owner of an internet forum was not responsible for defamatory statements made on the forum even though he controlled the forum by banning users, editing posts, and commenting with approval and disapproval on ceratin posts). Although this standard is used for online defamation, I believe it can be used as a parallel for distribution of illegal copyrighted material over online forums.

On the other hand, e1 of CDA 230 says 230 has "no effect on intellectual property law." I wonder if that means forums would be under strict secondary liability for enabling the illict sharing of copyrighted material... i.e. keep the mp3s off zilvia please. I like this forum.

disclaimer: not intended as legal advice. not necessarily an accurate statement of the law. this post is merely the opinion of this particular authoring end-user. ;)

That's all fine and good, but if Zilvia ever got sued we would shut down immediately.

[g6civcx]

You need to get 101 down pat. There should be no 101 issues in your claims. If you try to argue a 101 rejection using the old tests, you will immediately be shut down and given a final rejection.

Read the Interim Guideline I posted. While not every examiner understands them, that's the standards. If you appeal an improper 101 rejection using the Interim Guideline, the Boards will most likely rule for you and overturn the bogus rejection.


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.


Traditionally, 101 has 2 distinct requirements, like I said above. 101 also deals with double patenting, but I won't get into that.

First, you have to determine statutoy category of invention. If it's one a machine, manufacture, and composition of matter, you're good to go. The guidelines describe these categories in detail.

If it's a process/method, you need to see it's a statutory process or if the claim includes a judicial exception.

Judicial exception = law of nature, abstract idea, natural phenomenon.

The analysis goes like this. If your claimed subject matter is not a judicial exception, then your claim is a statutory category of invention. It doesn't matter which category your claim is, as long as it doesn't contain a judicial exception then you're good to go.

So if you have no law of nature, abstract idea, or natural phenomenon in your claim, you're good to go. The actual category doesn't have to be established, as long as it's not one of those 3 listed.

Just beware that you can't write "hybrid" claims. Hybrid claims recite structures embedded in a method claim. These are nonstatutory. If you want method steps and structures, you have to recite an apparatus claim with functional limitations (capable of performing), or a product-by-process claim (which are just product claims so that doesn't help you).


Review the State Street Bank decision. It says you can claim a judicial exception provided your claim has utility. Keep in mind that a statutory category of invention automatically has utility because it was enacted by law. You only have to discuss utility for a judicial exception.

The test for utility goes like this.

First, does your judicially exempted subject matter produce a physical transformation? The guidelines define a physical transformation in the appendix. Stuff like per se data transformation and processes with no outputs do not produce a physical transformation.

If you have no judicial exemption, you have to look to see if your subject matter has concrete, useful, tangible results.

Concrete = repeatable and predictable
Useful = specific, substantial, credible
Tangible = real world, non-abstract


You must have:

a) physical transformation concrete, or

b) results that are:
1)useful,
2) concrete, and
3) tangible


So you must have at least one of a or b. In order to have b, you must have all of 1-3.

Then there is one last test. If your claim preempts all substantial applications of an abstract idea, it wil be rejected under the guidelines.

The preemption is rare and people still don't quite understand.

This stuff will almost never come up if you work in the mechanical or chemical art. Clearly those things are statutory. It gets blurry when you start working with computer-related inventions and business methods.


Even if you do all that, you're still not done yet. Look in the appendix. THere are several things you need to understand.

Never ever argue using an obselete tests. Don't even make it part of the official record.

Read the descriptive vs. non-descriptive functional materials section. You need to get that down cold. Descriptive func mat + computer readable medium = statutory. Non-desc func mat per se, or couple w/ computer readable medium is still nonstatutory either way.

Also, you can't claim signals (software, electronic, RF, etc) because they are nonstatutory. You can claim the method of using signals to communicate, but that's as far as you should get with that.


It's confusing as hell, and I highly doubt your professors or even seasoned attorneys understand what the hell is going on.