It’s been awhile since I posted the whole enchilada, but this looks like a good thread for it.

First and foremost, this is not a mainly legal problem.

It’s a political problem, and the political question can be stated like this:

The 1952 act is silent as to the eligibility of information inventions. Do we want to allow patenting of logic and instructions under the statutory category of processes, or do we not?

If we don’t want to do that, as MM advocates, we should immediately say so in statue and common law, and just stop doing it.

If we do want to do that, it leads to a second question.

It very much appears that we do want to do that, because too many judges, lawyers, and patent-system stakeholders find the purposes of a patent system aligned with patenting certain new, useful, and disclosed information inventions.

What those certain inventions are remain entirely in the eye of the beholder, and those beholders are usually PTAB or District Court judges. This situation is unsustainable without a new and useful (!) way to handle these kinds of inventions.

I propose to modify Section 100(b) to read: a process which results in information consumed by human beings may not be patented, excepting processes improving information processing without regard to the particular content or meaning of the processed information.

It seems simple enough to me. If a human mind processes something, that thing is abstract. That should solve the statutory interpretation of “Process” simply and cleanly. No human mind, no statutory abstraction.

From link to merriam-webster.com:

The Crisscrossing Histories of Abstract and Extract

Abstract is most frequently used as an adjective (“abstract ideas”) and a noun (“an abstract of the article”), but its somewhat less common use as a verb in English helps to clarify its Latin roots. The verb abstract is used to mean “summarize,” as in “abstracting an academic paper.” This meaning is a figurative derivative of the verb’s meanings “to remove” or “to separate.”

We trace the origins of abstract to the combination of the Latin roots ab-, a prefix meaning “from” or “away,” with the verb trahere, meaning “to pull” or “to draw.” The result was the Latin verb abstrahere, which meant “to remove forcibly” or “to drag away.” Its past participle abstractus had the meanings “removed,” “secluded,” “incorporeal,” and, ultimately, “summarized,” meanings which came to English from Medieval Latin.

Interestingly, the word passed from Latin into French with competing spellings as both abstract (closer to the Latin) and abstrait (which reflected the French form of abstrahere, abstraire), the spelling retained in modern French.

The idea of “removing” or “pulling away” connects abstract to extract, which stems from Latin through the combination of trahere with the prefix ex-, meaning “out of” or “away from.” Extract forms a kind of mirror image of abstract: more common as a verb, but also used as a noun and adjective. The adjective, meaning “derived or descended,” is now obsolete, as is a sense of the noun that overlapped with abstract, “summary.” The words intersected and have separated in modern English, but it’s easy to see that abstract applies to something that has been summarized, and summarized means “extracted from a larger work.”

As to the second critical meaning- as a summary or condensation or outline, abstraction is a patentability issue connected with a 103 or 112 inquiry. If an invention is not claimed as an invention, but rather as an abstraction of an invention or of a concept that itself is not inventive, you can’t haz a patent.

Eligibility for abstraction relates to each major part of the Patent Act- both separately and in combination depending on the facts. When the claims recite no actual invention because they are aspirational or functional, that can be a 112 problem, or at least require a 112 quasi-analysis. When the claims recite no actual invention because they are beyond obvious (i.e. utterly conventional) it’s a 103 problem, or at least a 103 quasi-analysis.

Only in the instance where claims recite no actual invention because they lay outside the four statutory categories should a 12(b)6 be the proper method of determining eligibility- i.e. as a pure matter of law.

The law says the inventor must say what the invention is. Equity demands at some point that the accused have their say as to what the invention is too. An adversarial procedural construction step is required. The invention should be construed in a Markman like process to resolve this non-statutory abstraction.

Just as the words of claims are matters of law that must be construed when in dispute, what the invention actually is must be a matter of law, construed when in dispute. Like claim construction, this inquiry is a mix of fact and law, and by allowing motions, tutorials, and limited testimony, a fairer, cheaper process is in play that needs to happen if eligibility cannot be contested via IPR.

So far, nobody has substantially explained why my scheme is not better than what we have, out of step with current law, or unworkable for any other reason.

Step right up!