USPTO gets its prongs in order: but what about schema patents?

Interim New Patent Subject Matter Eligibility Guidelines

By Rick Jelliffe
August 27, 2009 | Comments: 2

I think many readers will be interested in the (2008-08025) interim New Patent Subject Matter Eligibility Guidelines which is the basic guidance document that the US Patent and Trademark Office has issued to its examiners for vetting patents. There are other subsequent steps to these of course, and the USPTO has been a little more responsive to public disquiet, coming particularly from the software coalface, with programs such as their Peer-Reviewed Prior Art Pilot Program, which I suppose is called "PRPAPP": the sound of a bubble bursting?

Throughout the 70s, 80s and 90s the US put severe pressure on the rest of the world to adopt a US-like patent system, while at the same time starving it of enough resources to function properly. The misjudgment that patents (temporary monopolies) enabled markets rather than disabled them, and the lack of awareness that economic benefits accrue better by markets with no barriers to entry, in fact with regulation to counterbalance tendencies to monopoly, and in particular by encourage RAND-z voluntary standards, has come slowly.

The new guidelines make software patents more difficult to be granted. The bar is higher. It remains to be seen whether this will just mean a change in patent drafting, and we will be back in the same boat. IANAL (I majored in business law and economics in Australia in the 80s, so I have enough knowledge to be dangerous) but when we were taught patents, the need for a patent to be recited as a machine or operation on tangible objects was emphasized: these guidelines seem to fit in with how things were back then: actually I don't see it as a radical win for anti-patenters, more like a return, post-Bilski, to the norm after a period of aberration and potential craziness. A counter-reformation rather than a reformation. But welcome none-the-less.

This is a matter of form: they apply a test "Is this a machine or a transformation of physical objects?". Specifically excluded (by courts) are:

  • A game defined as a set of rules.

  • A computer program per se.

but this relates to form: the game or program must be described in terms of machines to be patentable.

The USPTO document puts it like this: The state of the law with respect to subject matter eligibility is in flux. Not nearly enough!

XML vocabularies

My readers from XML.COM may be interested in patents on XML vocabularies. But my reading is that an XML vocabulary merely for data would not be patentable unless the vocabulary is fully characterized in terms of describing things a computer does with that document.

For example, if the data was a representation of some material object, such as an image or a scan of a printed page, and the patent involved how to get from the material object to the data, that would be potentially patentable.

A sentence of interest:

Judicially excepted subject matter is often claimed as descriptive material. Descriptive material should be evaluated to determine if the material has a functional relationship to the underlying structure in order to evaluate whether it creates a patentable distinction over the prior art or whether it is merely non-functional descriptive material that creates no patentable distinction.

For example, printed matter on an object or mere data (e.g., music) stored in a memory is typically non-functional descriptive material that would not create a patentable distinction over the prior art. (p.4)

From earlier material, I think this means that an XML vocabulary could not be turned into a machine merely by the patent saying that there is a computer with memory and the memory contains the data and the computer can load and unload the data ("a machine comprising...".) That is non-functional description. (I welcome correction by experts.)

Of interest to me is that the guidelines frequently mention non-transitory storage. I'd be interested if a reader can explain what that is about and its background.

As I have mentioned before, I think legislatures need to clear up the roles of national/international/treaty standards bodies and their domestic patent systems. And certainly the USPTO needs to include international and national standards in their examinations of prior art, if they do not do so already. Which means they need experts familiar with these standards on tap or in-house.

The modern economy is based on standards, frequently voluntary, and patent systems which undermine the standards system in the name of promoting the supposed economic benefits of patents are counter-productive. Patent-granting organizations need to see their core mission as promoting economic incentives rather than stamping pieces of paper, and in order to do that, they need to prevent themselves from riding roughshod over standards and the prior art embodied in standards. They must be diligent in preventing the subversion of standards by granting monopolies on the very kinds of things that the standard was created to directly enable for the use of all.

At the least, patents applications should be required to submit information on relevant industry, national, international and treaty standards as part of prior art commentary.

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I would like to restrict patents (and copyrights) to what the Constitution said. See for a more detailed explanation.

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