Patent Application for Jokes

101USSN 2006/0259,306 titled “Business method protecting jokes” has 25 claims and lists Timothy Roberts as the inventor.

Section 35 U.S.C. 101 is the part of US Patent Law that considers patentable subject matter. The Law states:

“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.”

Over time, the US Supreme Court has interpreted this statement to determine practical borders of what can and cannot be patented have changed.

For Example, in Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Supreme Court Ruled that microbes for breaking down crude oil were patentable.

Chief Justice Warren E. Burger who wrote the decision, and had the support of the majority of the Supreme Court, including Justices Stewart, Blackmun, Rehnquist, and Stevens, wrote:

We have cautioned that courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.” United States v. Dubilier Condenser Corp, 289 U.S. 178 (1933).

Regarding the scope of the original legislation, he wrote:

In choosing such expansive terms as “manufacture” and “composition of matter” modified by the comprehensive “any”, Congress plainly contemplated that the patent laws would be given wide scope.

Plagiarizing Ecclesiastes 1:9, Burger found that Congress had intended patentable subject matter to “include anything under the sun that is made by man,” he concluded:

Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is … to a non-naturally occurring manufacture or composition of matter—a product of human ingenuity.

In State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the principle was established that any “useful, concrete, and tangible result” was patentable, opening the door to business method patents.

Since then, the pendulum has swung back and in 2008, in In re Bilski, the Federal Circuit decided to reconsider State Street en banc and jettisoned the “useful-concrete-tangible result” (UCTR) test stated in State Street, but it did not explicitly overrule State Street in its entirety. The court said that the UCTR test “is insufficient to determine whether a claim is patent-eligible under § 101,” and “is inadequate,” and it reaffirmed that “the machine-or-transformation test outlined by the Supreme Court is the proper test to apply” instead. As to State Street, the court said, “those portions of our opinions in State Street, relying on a ‘useful, concrete and tangible result’ analysis should not longer be relied on.

However, the Federal Circuit’s majority opinion did not hold that business methods are categorically patent ineligible.

The Supreme Court affirmed the judgment of patent ineligibility in Bilski v. Kappos. It did not endorse the use of the machine-or-transformation test as the sole test, but said it was only a “useful clue” to making the determination.

The Court’s majority also declined to hold business methods categorically patent ineligible. Four Justices, however—Justice Stevens, concurring, joined by Justices Breyer, Ginsburg, and Sotomayor—would have held all business methods patent ineligible, on the basis of the historical background of the patent clause of the Constitution. In a separate concurring opinion by Justice Breyer, he listed points on which the Court unanimously agreed. One point was that the State Street Bank case was not a correct statement of the law.

The Supreme Court’s subsequent decisions in Mayo v. Prometheus and Alice v. CLS Bank further expanded on Bilski and substantially obliterated State Street. These decisions established a two-step inquiry in which, first, the court is to look to whether the claimed invention is directed to an abstract idea or natural principle; if it is, a second step follows in which the court must determine whether the claimed invention implements the abstract idea inventively or instead in a merely routine or conventional manner. Unless the implementation or application of the abstract idea embodies an “inventive concept,” the claimed invention is patent ineligible. (These concepts are explained further in the articles on the Mayo and Alice cases.) Under this test the State Street patent would be invalid.

Alice specifically holds that a generic computer implementation of an abstract idea is patent ineligible. In Alice, the Supreme Court held that a software-related invention on an existing business procedure could not be saved from patent ineligibility and be made patent eligible simply by saying, “Do it with a computer.” Instead, it would be necessary to implement the procedure in an inventive manner. This decision appears to have overruled State Street as called for in the eBay dissent.

Inventor’ Andrew Knight has several United States published patent applications for the storylines of movie plots. So far his portfolio includes four patent applications that variously published in November and December of last year. They are all entitled “Process of relaying a story having a unique plot”. The main claim of United States Patent Application Number US2005/0282140 reads as follows:

“A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating that a first character experiences de-ja-vu to mask an actual event.

United States Patent Application Number US2005/0272013 claims:

“A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating that a first character voluntarily enters a virtual reality; indicating a belief by said first character that said first character is not in virtual reality; and indicating that an interaction in virtual reality between said first character and a second character, while said first character has said belief, causes said first character to labor for, at most, a compensation substantially lower than a market value of said first character’s labor.”

So is USSN 2006/0259,306 titled “Business Method Protecting Jokes” patentable? Well it depends on the constitution of the Supreme Court and on guidelines provided by President Trump who seems determined to reverse the American Invents Act championed by O’bama.

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