New USPTO Section 101 Guidance

On January 7, 2019, the US Patent and Trademark Office issued revised guidance on whether an invention is eligible for patenting. (For example, can you patent a method of hedging risk?)

Patent law has always been, and remains, unpredictable on the eligible-for-patenting point. But the Supreme Court’s decision in Alice Corp. v. CLS Bank (2014) reset much of the case law that had built up, and it therefore allowed district court judges wide latitude to invalidate “bad patents” on the basis that the underlying ideas simply weren’t eligible. The sudden spike in invalidations increased the sense that the law was unpredictable.

Hence, there is much guidance and revised guidance on whether certain ideas are patentable. But I hate reading this kind of guidance; it’s boring. So I drew a picture.

The main revision appears to be the following:

Examiners should note, however, that revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity. Instead, analysis of well-understood, routine, conventional activity is done in Step 2B. Accordingly, in revised Step 2A examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.

And… you’re welcome.

Paper Summary: Faith-Based Intellectual Property

Is there any evidence — like actual data — that intellectual property protection does what we want, namely encourage creativity and innovation? This turns out to be highly controversial. And relevant when reviewing proposals that would, for example, “chang[e] the copyright regime without really understanding where the problem is.”

I recently ran across a set of papers discussing this truly fundamental inquiry in intellectual property law. The most easily accessible of these is Mark Lemley’s Faith-Based Intellectual Property, which reads almost like a personal complaint.

Lemley begins by summarizing past attempts to actually answer this question. Here’s one:

Fritz Machlup, commissioned by Congress in the 1950s to evaluate the patent system, came to the strikingly wishy-washy conclusion that if we didn’t have a patent system, the evidence wouldn’t justify creating one, but since we already had one the evidence didn’t justify abolishing it.

62 UCLA L. Rev. 1328 at 1331-32

This excerpt reflects the consensus tone. Researchers don’t seem to be able to say whether the data supports the notion that intellectual property actually accomplishes what we believe it accomplishes.

Frustratingly, Lemley complains, many researchers react to this ambiguity by retreating to “moral rights theory,” the notion that intellectual property protection is simply a recognition of what you own as a matter of basic rights, the fruit of your labor. He calls out Prof. Rob Merges at Berkeley specifically:

After decades at the forefront of economic analysis of the patent system, Merges threw up his hands: “Try as I might, I simply cannot justify our current IP system on the basis of verifiable data showing that people are better off with IP law than they would be without it.” While one might think that the logical thing to do if the evidence doesn’t support one’s theory is to question the theory, Merges instead observes that “through all the doubts over empirical proof, my faith in the necessity and importance of IP law has only grown.” IP rights, he decides, are Rights in the moral sense: things to which people have some intrinsic entitlement that “social utility alone is not reason enough to override.”

Id. at 1336-37.

Lemley suggests that justifying IP protection solely on the basis of moral rights is deeply problematic. Intellectual Property law does not correspond well to our instincts about what intellectual labor should be awarded property rights:

We grant extremely valuable patents to accidental discoverers [citing photography and penicillin] and extremely valuable copyrights to photographers who happened to be in the right place at the right time [citing Zapruder film of JFK assassination and Reginald Denny beating that led to LA riots]. Further, we allow those rights to be enforced even against people who put more productive work into the final product than the IP owner—the companies who actually make products based on an idea sketched out by a patent troll [most lawsuits are filed against independent inventors] and the artists who remake a photo into an iconic image [discussing copyright case against Shepard Fairey].

Id. at 1340.

Lemley concludes with his rather personal, and it seems well-founded, complaint:

Rather, the line I hope to draw here is between theories of IP that are responsive to evidence and those that are impervious to it. The evidentiary support for the current IP regime is dubious enough that it should prompt us to have a serious conversation as a society about when IP is serving the goals of encouraging the creation and dissemination of new content and when it isn’t.

Id. at 1345.

But serious conversations are in short supply these days.

Impeach Trump Now

“Impeach Trump Now” is the title of an Atlantic article by Yoni Appelbaum being published in the March edition, which focuses on the Trump presidency at its midway point. Its central premise, as the title suggests, is that impeachment proceedings should begin now because such proceedings would have benefits even if Trump is not ultimately removed by the Senate.

Opponents of impeachment point out that, despite the greater severity of the prospective charges against Trump, there is little reason to believe the Senate is more likely to remove him than it was to remove Clinton. Indeed, the Senate’s Republican majority has shown little will to break with the president—though that may change. The process of impeachment itself is likely to shift public opinion, both by highlighting what’s already known and by bringing new evidence to light. 

Appelbaum argues that impeachment proceedings would have five distinct benefits:

  1. Trump loses control of the public conversation as attention turns to the proceedings;
  2. the undemocratic elements of Trump’s agenda will be paralyzed while he deals with the Congressional investigation: “There may be no more effective way to run out the clock on an administration than to tie it up with impeachment hearings.”
  3. impeachment proceedings can be used as a tool for discovery, discernment, and (in my own view) summary and distillation of the transgressions;
  4. it defuses the potential for actual political violence by providing a legitimate option for removing a divisive leader: “The public understood that once the impeachment process began, the real action would take place in Congress, and not in the streets.”; and
  5. it would damage Trump’s political prospects even if unsuccessful.

In fact, it’s the very efficacy of these past efforts that should give Congress pause; it’s a process that should be triggered only when a president’s betrayal of his basic duties requires it. But Trump’s conduct clearly meets that threshold. The only question is whether Congress will act.

The remainder of the article is a history lesson about prior impeachment proceedings — those of Andrew Johnson, Richard Nixon, and Bill Clinton — and how those proceedings impacted their respective presidencies even though none of them were ultimately removed. Appelbaum argues that Trump’s presidency will be similarly constrained, and that this constraint alone should justify the exercise.

I would add one other benefit to this list: demonstrating the health of our institutions. We have long influenced the world through our military power and moral and institutional superiority. As our numbers and power are inevitably challenged globally, it is vital that we continue to command respect for our democratic principles, transparency, and excellent decision-making. Much of Trump’s impact can be reversed, but the most serious long-term impact will be the undermining of trust and respect for our public institutions. Impeachment would demonstrate that we remain a healthy democracy with the continuing capability to root out corruption, prejudice, and incompetence.

Winston Churchill may or may not have said that, “You can always count on the Americans to do the right thing after they have tried everything else.” Hope springs eternal.