Is 35 USC 101 Judged by the Claims?

By Dale B. Halling
May 28, 2013

As I read CLS Bank v. Alice, I wondered if 35 USC 101 is really a question about the claims or about the specification?  35 USC 101 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.

This section does not say anything about the claims and while the claims define the invention they are not the invention.  To suggest otherwise is to confuse reality and elevate the draftsman’s art above the inventor’s work.

Now you might argue that even if this is true, what is important is whether the claims are directed to statutory subject matter, not whether the specification or the inventor’s actual creation is directed to statutory subject matter.  I disagree.  If the specification describes patent eligible subject matter and the claims do not, then the claims fail under 35 USC 112(b), not under 35 USC 101.

The CAFC and the Supreme Court are being contradictory when they state that the manner or cleverness of drafting the claims cannot overcome a 35 USC 101 issue and then examine those same claims to make a 35 USC 101 determination.

An example will help clarify this matter.  Assume you invent the first LASER.  Your patent attorney correctly describes how to make and operate the LASER, but his claims state, “I claim a painting of a woman with an enigmatic smile.”  Clearly, the claim is not directed to statutory subject matter, but a 35 USC 101 rejection is inappropriate, because the specification describes a LASER, which is statutory subject matter.  I believe the correct determination is that under 35 USC 112(b) the inventor failed to draft claims to the invention and his claims do not have support in the specification.

So what do you think?  Should a 35 USC 101 determination be made by looking at the claims or the specification of the patent?

The Author

Dale B. Halling

Dale B. Halling

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 70 Comments comments.

  1. step back May 28, 2013 7:33 am


    There you go again,
    buying into the nonsense verbiage of the judiciary.

    As a patent practitioner you should know that claims are not compass needles.
    They do not “direct” themselves to the North, the South or any other linearly pointed-at direction.

    Claims fence-in or encompass that which falls within the scope of their language, where that scope of encompassment is construed under traditional rules of claim construction.

    (Encompassment? Is that a valid word? Is that where the compass needle and the direction that claims are “directed” to arises from? Hmmm.)

  2. Anon May 28, 2013 7:34 am

    I think that an even more fundamental question is afoot.

    I think the Court – after the 1952 Act – went down a path and put themselves in a bottleneck.

    Look again at the Prometheus decision: the Court has placed their Judicial Exceptions firmly in 101 – no matter what. They reject any type of attempt to place their exceptions in 102/103/112.

    They also refuse to allow their EXCEPTIONS to be made into a dead letter. I think that it is important to note that it is not the law itself that the Court sought to protect and preserve – it was the Court’s own interpretation that was being protected and preserved. Almost as if, the Court itself is beginning to realize the flaw in their reasoning, but will not allow that reasoning to be analyzed too closely.

    While they walked down this particular path for policy reasons, I think that they were (and are) firmly aware of the fact that Congress in 1952 was reacting against an anti-patent judiciary (the pendulum – like today – had swung too far in that direction). Congress introduced 103 to remove the Court’s ability to set federal common law as to what ‘an invention’ meant (and this setting at a definitional level is only done under 100 and 101). The Court knew that it wanted to maintain control at this particular level – not at the level of individual claims that would be subject to 102/103/112. To them, control at the claim level was not enough.

    It still isn’t.

    I have become convinced that the writing of patent law and the interpretation of patent law have been illegally conflated by an activist Court, and that the Court has stepped over a constitutional line in order to keep its hand on the pulse of a very powerful body of law. That they have done so for possibly noble (at least in their own mind) purposes is quite besides the point. Ask yourself – where does the ability to ‘implicitly read into’ statutory law end? Look at the mess that has been made of 101.

    I am reminded of an analogy with a liar and his lies. The first lie is bad of its own accord. But the necessity of preserving the fiction of the first lie means that the liar must support that first lie with more lies. If the lies are looked at closely, than even more grandiose lies are made. A complicated and convoluted mess ensues until the bulk of the lies crashes down.

    Are we at that point yet with 101 and the Judicial setting of law? Will this Congress be able to understand that its constitutional duty has long been abrogated under the guise of implicit interpretation? WIll the wide open gateway become simply too narrow by the selective pruning of what even is considered eligible for patent protection? Dale, I think your view here of claim versus application is a good one, but it is just another factor leading to a much bigger point.

  3. Ronen Yehiav May 28, 2013 7:36 am

    35 USC 112 states, inter alia, “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Thus, the invention IS THE CLAIMS (as is accepted worldwide, see, for example, the Israeli Patent Law: “13.—(a) The specifications shall end with a claim or claims that define the invention, on condition that each said claim reasonably arise out of the subject described in the specification.”

  4. John Roethel May 28, 2013 8:17 am

    Mr. Halling:
    You may wish to consider §112 (b) with regard to your analysis.
    §112(b) states that the “specification shall conclude with one or more claims …”. I have always thought that the original claims were considered part of the specification.

  5. Mike May 28, 2013 9:31 am

    To Mr. Halling, with respect to John Roethel:

    112(b) goes on to state that the one or more claims are “…particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” The specification may describe patentable subject matter and non-patentable subject matter, and the inventor may regard both as inventions, and point them out in the claims. Clever claim drafting or not, it is the claims that define the scope of any patent granted, and if the claims are directed to non-patentable material, it is the claims that should receive a 101 rejection.

    Your LASER example only shows one side of the coin. Suppose the specification described a painting of a lady with an enigmatic smile as well as how to build and operate a laser, and both inventions are claimed. The claims are drafted to the inventions, and one set of claims should receive a 101 rejection as being drawn to unpatentable material, while the other should not.

    Even if the specification only described a a painting of a lady with an enigmatic smile, while the claims were directed to the use and operation of a laser – you don’t get a 101 rejection because the invention described in the specification is not patentable, you get a 112 rejection because the claims have no support in the specification. However, if your claims are sufficiently enabling as originally drafted, there is no reason you can’t amend the specification to provide support, and receive a patent on the LASER.

    Finally, if your specification described a painting of a lady with an enigmatic smile, the use and operation of a LASER, and a method of projecting, duplicating, or measuring the painting using a LASER, are you suggesting that a claim to such a method should receive a 101 rejection because the painting with the enigmatic smile is a non-patentable invention described in the specification?

  6. Anon May 28, 2013 10:16 am


    When you state: “there is no reason you can’t amend the specification to provide support, and receive a patent on the LASER.” you mean as long as you don’t violate the rule against adding new matter, right?

    That’s a formidable task, given your hypothetical.

    And generally (not to Mike), my earlier comment applies regardless of whether you wish to apply 101 to the claims or to the application (specification including claims).

  7. Benjie May 28, 2013 3:11 pm

    So would the specification be rejected under 101? It’s the claims that are examined and are rejected in light of the specification. I do have a problem with claims rejected under 101 for possible intangible embodiments not even included in the specification. Why do I have to add “tangible” to my computer readable medium claim? A claim can’t legally cover intangible embodiments, so why do I have to add that word. It’s a given. Could a court find infringement by an intangible embodiment? Of course not. So why do I have to specifically cite that term in my claim?

  8. step back May 28, 2013 3:52 pm

    There is one additional piece of statutory language connected to the obtaining of a patent therefor under 101:

    PRE-AIA version:
    35 U.S.C. 115 oath of applicant.

    The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; …

    POST-AIA version:
    35 U.S.C. 115 Inventor’s oath or declaration .
    (b) REQUIRED STATEMENTS.–An oath or declaration under subsection (a) shall contain statements that–

    (1) the application was made or was authorized to be made by the affiant or declarant; and

    (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.


  9. step back May 28, 2013 5:49 pm

    @Gene: I need a get out of jail pass from your spam catcher. Thanks.

  10. Paul Cole May 30, 2013 9:16 am

    As an alien (as the US Immigration Service used to remind me) I am spooked by Alexsam v IDT Corporation. The claims at issue were drawn to a system for activating multifunction cards using a point-ofsale (“POS”) terminal, such as a cash register or a freestanding credit card reader. Judges Dyk and Moore thought that the claimed subject matter was unobvious. Judge Mayer thought it did not even qualify under s.101.

    It seems that disfunctionality is not confined to Congress but has now spread to the courts where it has become endemic. For users of the patent system legal certainty is needed. Members of the CAFC are urged to take a weekend in Vegas or Tampa or another suitable resort, book a quiet conference room, and hammer out an agreed position which gives us professionals a “practical working guide” to quote Judge Birss from a recent UK decision.

  11. Anon May 30, 2013 10:11 am


    Even if the CAFC did as you suggest, a problem remains, looking over their shoulder – the United States Supreme Court.

    May I suggest that they too be invited to this weekend event and render reason unto their jurisprudence?

  12. Paul Cole May 30, 2013 10:50 am

    Looking at the claim in Alexsham from European eyes I am also spooked that it was found inventive. But I do not have a copy of the trial record, so there may mort to it than meets the eye.

  13. step back May 30, 2013 6:03 pm

    For sake of completeness, we should include a link to the mentioned Alexsam, Inc. v. IDT Corp. case:

    Note that the claim recites clear apparatus:
    a. at least one card …;
    b. a transaction processor …
    c. a processing hub …

    We have reached an age where even machine sytems are “abstractions”.
    God help us.

  14. Dale Halling May 31, 2013 11:53 am

    Thank you for all the thoughtful comments. While it was not part of this post I think it is important that we go back and define what an invention is and I am not talking about the statute. An invention is clearly something that is created by man (would not exist but for man), but this is too broad as it includes paintings, pictures, books, etc. I think the distinguishing characteristic of an invention is that it has an object result (books, paintings etc have a subjective result). For instance, a LASER will produce collimated monochromatic light. Without a clear definition of what an invention is, we are in Alice in Wonderland.

  15. Anon May 31, 2013 1:42 pm

    I think attempting to define ‘invention ‘ outside of the statute is just (implicitly) inviting trouble.

  16. step back May 31, 2013 1:59 pm

    There is a difference between the broad concept of inventing per se and inventing patentable subject matter.

    My personal definition of inventing per se is that any time a person comes up with a combination of things that are not dictated by a cook book (or other template) they are “inventing” to some extent or another.

    Therefore, I can “invent” a new character to be included in a story I am generating.
    I can “invent” a new word: i.e. in-know-vision.
    Almost anything that I do not copy but rather originate from inside of me is an “invention”, even if someone else did it before me … because a “novel” invention is a narrower thing than an invention per se. (Similarly, a “useful” invention (one belonging to the useful arts) is a narrower thing than an invention per se.)

    35 USC 101 limits itself to “new” and “useful” inventions, more particularity those that are ANY process, ANY machine, ANY manufacture, ANY composition of matter or ANY improvement thereof.

  17. Anon May 31, 2013 3:10 pm

    But step back,

    Isn’t ‘new” not a requirement per se of 101 (as it is captured elsewhere?

    Sure, utility is a 101 requirement, but that too, was always understood to be an extremely low bar.

    I believe the better read of 101 is a “wide open gate.”

  18. Dale Halling May 31, 2013 6:12 pm


    The Constitution states that Congress must protect the Rights of inventors. In order to make sure we are protecting inventors, we have to know what they are separate from the statute. In order to know what an inventor is we need to know what an invention is. To correctly draft the statute correctly we have to define the word invention. The nonsense you complain about by the courts is the result of poor definitions. Novelty is a requirement for something to be an invention or for someone to be the inventor. You have to be first to be the inventor. However, non-obviousness is exactly the judge developed nonsense you complain about. There is no threshold or type of invention that is excluded from the Constitutional requirement to protect the rights of inventors.

  19. step back May 31, 2013 6:33 pm


    You do not have to be the first to “invent”. You have to be the first to uncover (dis-cover) your invention so that the progress of the useful arts may be promoted:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

    Indeed, one who invents but conceals, suppresses or abandons the invention rather than dis-closing his/her dis-covery is not entitled to a patent.

  20. Anon May 31, 2013 7:31 pm

    step back,

    Previous discussions have touched upon your statement, and the fact that that statement is no longer good law post-AIA (at least to the portion of suppression).

    As to any definitions, all of that is statutory, as the constitutional clause is a clause for the direction of power, and truly not much more than that. Sure, there is the ‘for limited times’ aspect, but look at copyright to see that ‘limited times’ can be anything except unlimited times, and that being literally unlimited. Effectively unlimited, but still technically limited would meet constitutional muster.

  21. Anon May 31, 2013 7:34 pm


    Your use of ‘must’ is an over-statement. The delegation of power does not carry with it an imperative to use that power.

  22. Dale Halling May 31, 2013 9:14 pm

    See the Declaration. the reason for gov’ts is to protect Rights. The Constitution specifically states “the rights of Inventors…”
    therefore, it is not an optional clause. to suggest otherwise, is to ignore the Declaration and ignore the word “right” and ignore the historical context of natural rights.

  23. MD June 1, 2013 4:14 am

    I’m indebted to Step Back for reconciling for me the patents clause of the Constitution with the public policy reason, outside the USA at least, for having a “First to File” patent system.

    First to File (and the 18 month publication rule that goes with it) rewards those who really do “promote the progress” within the useful arts by being the first to uncover to the public (dis, covering, is what they are so doing) enabling teachings of unobvious contributions to the art.

    So, First to File is more in line with the Constitution than was First to Invent.

    Amazing how it can sometimes take so long for what is obvious to become apparent.

    To stave off rude retorts, I should add one thing. When you have a valuable trade secret, you can choose not to promote the progress by deliberately choosing not to file at the PTO. It is your right. As to the Quid pro Quo in the patent system, if there is something patentable, the 18 month publication is a real deterrent to those contemplating infringing, a “Keep off the Grass” sign. But if there is no patentable matter, the 18 month publication will then have given nothing away.

  24. step back June 1, 2013 6:35 am


    Don’t thank me.
    Thank Judge Giles Rich.
    I’m merely parroting an article about an interview with the good judge (before he passed) in which he explained the words dis-cover and dis-close basically reveal that something is being uncovered or taken out of the closet. Indeed when he co-authored the 1952 Patent Act, this is why they included in section 100 that invention means invention and discovery. 😉

  25. Dale Halling June 1, 2013 10:11 am

    The first to file is not in line with the Constitution. The Constitution says Congress is to protect the RIGHTS of Inventors, not the first person to file. The first person to file is not an inventor. It is the first person to create. The patent statute only protects those that apply for a property right – you have to disclose in order to get protection metaphysically. The word discover does not cover filing on someone else invention. Discover applies to the idea of where the original idea comes from, but you have to explain how to create the invention 112.

  26. step back June 1, 2013 12:50 pm


    I DO appreciate that you cling to a cognitive understanding of what “invent” should mean that is different from the one I hold on to.

    You are not alone. Many people have that sense of what “invent” should mean.

    However it is clear from the language of 35 USC 101 that the drafters of the 1952 Act understood that one could “invent” something and yet the invention is not “new” in so far as the class of ordinarily skilled artisans is concerned; which is why 35 USC 101 includes the word “new”.

    A classic example is that of one inventor who claimed washing out a horse stable with a flood surge of water. It was found that one story of Hercules’s labors included him doing the same thing in ancient times. It was a lost technique that had been re-discovered by the modern times inventor. But it was not “new” when tested against printed publications.

    See this IPWatch comment from a year ago: 😉

  27. step back June 1, 2013 1:00 pm


    In so far as Article 1, section 8, clause 8 is concerned, I personally focus on the words “secure” and “exclusive” and wonder if some acts of Congress or the USPTO are ones that de-secure the inventor’s exclusive rights or make them non-exclusive.

  28. Dale Halling June 1, 2013 1:02 pm

    step back,

    I think the “discover” is best understood by the classic case of turning paper pulp into paper. The inventor discovered that just lifting the sieve allowed the paper to be created faster. He still created a faster way (device for) of making paper.

    As a matter of policy, many countries used patent law as a way to encourage skilled artisans to move to their country (see glass industry in 14-15 hundreds). Just because you obtain a patent under that system does not make you an inventor.

  29. Anon June 1, 2013 1:33 pm

    step back,

    In response to your statement of “wonder if some acts of Congress or the USPTO are ones that… make them non-exclusive.

    I would posit that the Prior User Right is precisely this type of non-exclusivity. The Prior User Right is a private pseudo-right that is ‘earned’ with no apparent public benefit in a Quid Pro Quo manner. I hold serious reservations concerning the constitutionality of that particular provision (and such reservations are in no way ameliorated by any sense of “well, the rest of the world does it,” as the rest of the world does not have our constitution).

    As for your last comment, I would fully disagree. Inventor is a term that is defined by the statutory context. Patent rights are also purely territorial, that is, there is no such thing as a ‘world patent’, and any patent right is only good within the the political sphere from within which that patent is granted. If under that “move here” system, an inventor is defined to cover that type of skilled artisan, then by all means, that type of skilled artisan is an inventor. Extrinsic and implicit readings are what is driving the chaos, and the versions I see from you and Dale, while well-intentioned, are every bit as chaos inducing as the versions of implicit reading that I see from the Supreme Court.

    Dale, I will continue to disagree with you about the imperative nature you are imputing to the Constitution. The Declaration does not trump the Constitution, and you cannot read from the one, an order to do something, into the other. That is simple legal error.

  30. Dale Halling June 1, 2013 5:23 pm


    No it is simple logic. The Constitution was written in the context of Natural Rights and the Declaration of Independence. Right has a specific meaning in this context and it is not simply a wish – it is the purpose of a government. Inventor has a definition separate from the statute, otherwise the Constitution is just Alice and Wonderland nonsense – where words mean whatever congress means them to mean. If that is the case there is no reason for the Constitution.

  31. MD June 2, 2013 5:43 am

    Authors and Inventors. Writings and Discoveries. Authors write stuff. Inventors dis-cover stuff. So is “respectively” implicit in the Patents Clause?

    I see no contradiction between “Inventor” and “First to File”. For example, the European Patent Convention decrees that the right to a patent for an Invention belongs to its Inventor. Simple as that. Basta!

    That right can pass across, to a Successor in Title, decrees the EPC.

    The Successor, the new Owner, can apply for a patent. And if the patent goes to issue in the name of anybody else but the true owner, it is bad, invalid. In all of that, where’s the offence to the Founding Fathers?

  32. step back June 2, 2013 7:29 am


    As a hypothetical,
    imagine 2 inventors who independently invent the same thing
    essentially at the same time.

    At the moment that each invents, the invention is “new” to the inventor and “new” to the general public to whom the invention has not yet been dis-closed by either inventor.

    As soon as one of these identical twin inventors dis-closes his invention by filing, then the invention is no longer “new” for the general public because it has been disclosed by the act of filing.

    So when the 2nd twin arrives at the steps of the Patent Office, the invention is no longer “new”, even if the 2nd independent inventor was actually first to conceive but late in the race to the steps of the Patent office.

    Do I like the new, first to file regime? No.
    But is it in conflict with the “dis-covery” aspect of the US Constitution? No.

  33. Anon June 2, 2013 8:16 am

    Even under First To Invent, the possibility of independent invention does damage to Dale’s stance. Can you dis-cover and dis-close something more than once? In a very real sense, this possibility is tied to the state of the right itself.

    Even under First To Invent, the prize of a patent transforms from an inchoate right to one fully earned, but only after certain proscribed steps are completed.

    The inchoate right is the right that Dale speaks of when he mentions a Natural Right. And yes, the Declaration informs us of the meaning – but it does not compel, and that is my point. The constitution, and not the constitution and declaration, is the ultimate law. Inchoate rights are not compelled to be protected by Congress, are they? Yes, I recognize that you say yes, but you say yes only after elevating the declaration to the same status as the constitution, which I reply that you cannot do so. We may have to agree to disagree on this point.

    The Natural Right, the inchoate right is simply not the same as the patent right, is it Dale? That inchoate right might mature into a patent right , but then again, it might not (for a variety of reasons).

    @step back,

    I think you are close, but I would distinguish in one manner – traditionally, as part of the Quid Pro Quo, patents were prosecuted in secret, and the public did not obtain their Quo until after the inventor obtained her Quid. If prosecution did not fare well, the inventor could at least expressly abandon, no publication would take place, and the inventor could then proceed under Trade Secret. The public did not take Quo of any kind, and a later dis-coverer was not blocked on the Patent Office steps.

    Forced publication did damage to this trade-off. The Quo is taken regardless of Quid given. If you look back at the record when this publication became forced, you will see that certain guarantees of substantive action were put in place to help minimize this recognized detriment to the inventor. It is my opinion that such not only were not sufficient, but that such have allowed a slippery slope to emerge and today the publication and taking of Quo is being demanded instantly in some circles. Further, to MD’s thinking that no damage is done with a (prematurely) posted “Keep Off the Grass” sign, I see damage from both Type I and Type II errors, and damage to both the inventor and to society. I would rather have the original Quid Pro Quo be understood by our lawmakers, and the taking of Quo returned to a balance with the actual giving of Quid – for fully earned patent rights. I grant that this may not rise to be a constitutional question, and I do not think the law in this regard is ‘wrong,’ just that it is not the best (as in balanced) bargain possible.

  34. Dale Halling June 2, 2013 10:26 am


    All property rights are inchoate. It is the main job of government to protect property rights, however states were in charge of the exact rules for protect “real” property and chattel. Congress was given the power to setup the same sort of rules for patents. It was not a you might want to do this, it was it is your job not the states, not the president (he can’t legislate), not the courts (they can’t legislate).

    “Whenever the legislators endeavor to take away and destroy the property of the people, or to reduce them to slavery under arbitrary power, they put themselves into a state of war with the people”
    John Locke

  35. Dale Halling June 2, 2013 10:29 am


    You see not contradiction, because you have not clearly defined inventor. Simultaneous invention doesn’t happen. Near simultaneous invention may, although it is extremely rare. The first person(s) to create is the inventor. Whether they receive a patent depends on diligently filing for it. You cannot obtain a right in an invention without the world knowing what it is – that’s logic.

  36. Dale Halling June 2, 2013 10:59 am


    The publication rule is as you point out totally destructive to the concept of a well functioning patent system.

  37. Anon June 2, 2013 11:09 am


    Your post at 34 manifests a legal error if you cannot see the distinction between inchoate rights and legal rights – the two simply are not the same, and cannot be treated as the same.

    Likewise, you make a legal error by elevating the declaration to the status of the constitution. I understand why you would want this to be so. It just is not so.

    Unless you address these two points correctly, we cannot continue a conversation. (but at least we agree on the taking aspect of forced publication).

  38. MD June 2, 2013 11:21 am

    Dale, this in haste. Who shall define “Inventor”? You, I gather.

    Your Definition: Inventor = First to Create. Where does it come from? Who (besides you) has defined it that way? It might be self-evident to you but, sorry, not to me.

    How do you get to the point that nobody else is entitled to a patent except the entity which you personally have defined as the only fit and proper person?

    Was it you who cited Humpty Dumpty, in Alice Through the Looking Glass? Good cite, whoever did.

    Only asking.

  39. Anon June 2, 2013 11:52 am

    I certainly hope that he overused meme of Humpty Dumpty is not going to be a regular retort here. It already is mindlessly used at Patently-O (to my namesake, no less).

  40. Dale Halling June 2, 2013 1:32 pm


    I actually gave a very well laid out argument for my definition of an inventor. An inventor is someone who invents. An invention is anything made by man that has an objective result. That distinguishes it from the creation of books, painting, other artistic objects. An invention refers to a class of objects/things/processes. Reproduction is not invention. If you make a copy of the LASER that was invent by Gould you are not an inventor. So to be the inventor you have to be first – not a copier. To obtain patent rights you have to disclose.

    You are free to argue with my definition. Feel free to provide you own. But no rational definition of inventor is the first person to file a patent application. That definition leads to a circular reasoning.

  41. Dale Halling June 2, 2013 1:37 pm


    Talk about clear legal error – you ignore the word RIGHT in the patent clause. You ignore the context of the drafters of the constitution, you ignore the purpose of the constitution, you ignore the history in which the constitution was written and they you accuse me of legal error. Pretty presumptuous. I am not elevating the Declaration, I am providing you historical context for the word you want to ignore RIGHT.

    As for inchoate rights that is about the process of the law. You have a right to self defense even if the law does not recognize. Rights are protected by governments, not created by them.

  42. step back June 2, 2013 1:41 pm

    @MD #38:

    “Who shall define “Inventor”? You?”

    Dale is –and I give him credit for it– on openly proclaimed Libertarian; meaning that he believes in “Natural Rights” as an inalienable foundation for all discussions. Therefore you will never disabuse him of the notion that he who “creates” an invention (first?) owns it under the rules of “Natural Rights”. To define inventor in any other way brings the notion of inventors and their “Natural Rights” crashing to the ground.

    I, on the other hand, have a more pragmatic view of the world. Law, order and civilization are enforced at the end of a pointed gun and a policeman’s badge. There is nothing “natural” about it except that might makes right. I would not like to live either under a system of total anarchy or under a system of absolute dictatorship. The hard part is finding a right balance. In trying to find that right balance for modern times, Congress has tilted the scales more in favor of he who is first to file rather than he who is first to conceive and diligently reduce to practice. A fine point. Not a Constitutional crisis.

  43. step back June 2, 2013 1:44 pm

    More LOL
    Looks like Dale & I were posting at the same time
    And thinking along the same lines, namely, Dale’s belief in RIGHTs that are “natural” ones 🙂

  44. MD June 2, 2013 2:00 pm

    Thank you Dale, and people. We agree that a copyist is not an Inventor. But that is the easy bit.

    Harder is to adjudicate between diligent Inventors, none of whom abandon their respective invention.

    In my experience it happens often, that individuals in different jurisdictions invent (create) much the same Invention, at much the same time, independently of each other.

    How shall we divide up the exclusive rights on offer, amongst them? One way might be to give full faith and credit to what they respectively dis-cover to the public, and when they dis-cover it. That way, we fulfill the public policy objective of a patent system, exclusive rights in return for the earliest possible enabling disclosure.

    Giving ALL the rights to the one who conceives first, but dis-covers last, strikes me as perverse because it is not delivering what a functional patents system ought to deliver, namely, promotion of progress in useful arts.

    But don’t mind me. Plainly, I don’t “get” all this “natural rights” stuff.

  45. Anon June 2, 2013 2:28 pm


    With all due respect, I have ignored none of what you accuse me of ignoring. I do understand the context. I also understand the distinction between an allocation of power and a directive to use that power. Quite in fact, I ask that you do not ignore the difference between the constitution and the declaration – are you saying the two are on equal footing under the law?

    Further, I understand your passion in your beliefs, but please, I will persevere through the outburst and ask that you address the very real legal difference between an inchoate right and a fully developed patent right.

    Yes, Dale – there are two distinct rights involved. One of them can be pursued in a court of law. The other, not. You are plainly in error in thinking that a patent right is not a government created right. Yes, a patent right originates with an inchoate right, but the two are just not the same. You come close in recognizing that the process of law is involved, you just don’t come close enough.

    This is critical.

    I look forward to you addressing this distinction.

    @step back, I think you might agree with me that Dale is attempting to champion the inchoate rights and becoming confused as to the patent rights. I do understand the Libertarian view, and the view being put forth concerning patent rights can in fact co-exist with that view – as long as the distinction between an inchoate right (and all that that term implies) and a fully developed patent right is kept clear. But I disagree to the extent that independent creation cannot exist in a Libertarian world. Quite in fact, there is nothing to speak against such existence, as it is man’s choice to award the notion of exclusivity to the fully developed patent right (noting full well that inchoate rights are not awarded any such notion of exclusivity).

    There is nothing in Dale’s definition

    anything made by man that has an objective result…
    Reproduction is not invention…. So to be the inventor you have to be first – not a copier.

    that precludes two independent inventors from inventing the absolute same thing (other than his mere assertion that this does not happen, to which I afford no weight) – be it separated in time or not. A man living in a cave, alone and outside the stream of society is no less an inventor of many things not novel, as in his own world, he copies from no one and thus his items that are made by man and have objective results fit the basic definition. Keep in mind too, that dis-closure is not necessarily tied to the definition of invention. That is purely an operation of law, which creation, I think everyone here agrees, is the sole purview of the legislative branch.

    Interesting about the reward factor for the first to dis-cover. What then do you feel about the abrogation of exclusivity that the US has imported from other realms in the greatly expanded Prior User Rights? Mind you, I am not talking about the practice of that ‘right,’ but rather, the theoretical underpinning and tie-in to what our U.S. constitution dictates. Is such an exclusivity-defeating item constitutional in your (admittedly limited) understanding of U.S. jurisprudence? If you think this passes constitutional muster, then how then does this not do violence to the constitutional term?

  46. MD June 2, 2013 2:58 pm

    Prior User Right? Well, suppose you are not a copier but have made Innovation and decided not to patent it. Clever Software or something.

    Then, later, somebody else independently makes much the same Invention, patents it and asserts it against you. Europe thinks that natural justice suggests you ought to be allowed to carry on doing what you had already started doing, before that other fellow filed at the PTO. Your European PUR is limited to what you were doing before, and no more, and to the jurisdiction in which you were doing it, and no other. Meanwhile, the patent owner can enjoin everybody else.

    This is fair to the inventor, the public and the prior user, and promotes the progress. It ain’t rocket science. I like to think the Founding Fathers could have signed up to Europe’s PUR scheme. Why couldn’t they, pray?

  47. Anon June 2, 2013 3:32 pm

    Thanks MD, as I already understand this viewpoint as enjoyed for Europe, my question was a bit different.

    Look now to the U.S. and look to the deliberate words in our constitution.

    Exclusive, does not mean non-exclusive. If you like to think the Founding Fathers meant something else, than that very word would not have been used. Much like “forever” would be the same as “for limited times,” you cannot have both. You ask why couldn’t they – a fair question, but a pointless one. They did not choose the system you describe when they wrote the constitution. You might as well really join Alice and the Hatter for perpetual tea. They chose the words they have chosen.

    I would have you understand that traditionally, the patent right in the U.S. enjoyed both a carrot and a stick approach.

    The carrot was the possibilities afforded you – and you alone – as no one else could do anything with the invention without your say-so.

    The stick was that if you did not race to the office to share, you could very well be at the mercy of someone else who also was a true inventor – when that person DID choose to share. (@Dale, this is yet another dagger to your inchoate rights viewpoint that you might care to address).

    With this in mind, put yourself outside of the comfort zone of being European – let me see a view of our constitution from someone with a fresh perspective – but a perspective on our law, our historical decisions, not an alternative not chosen.

  48. MD June 2, 2013 4:10 pm

    Exclusive means pertaining to exclusion, exclude.

    A patent is indeed a right to exclude, that is to say, an exclusive right (as opposed to some other sort of right)..

    That “exclusive right” goes to the Inventor. The patent gives her the right to exclude. The EPC gives her the right to exclude.

    Perhaps you are thinking that the Inventor has the exclusive right to enjoy and exploit the Invention, that nobody else can exploit it? But that can’t be correct, if only because the Invention might be an improvement, within the scope of protection of an earlier master patent which covers the whole technical area in which your improvement sits.

    Don’t yet see the incompatibility that you think you can see.

  49. Dale Halling June 2, 2013 5:33 pm

    You cannot ignore Natural Rights and hope to make any sense of the Constitution or the Declaration. The Declaration specifically defines the purpose of government. The Constitution is the implementation. But without the purpose, the Constitution is just a random thoughts. Without a definition of inventor or definitions generally then the Constitution is just meaningless letters. The purpose of the patent system is to protect the rights of inventors. The constitution talked about the rights of inventors before there was a patent system. Clearly the founders believed in rights separate from the idea of “legal rights” – a patent system for inventions. This is also confirmed by a look at the Declaration. Natural rights are why governments are created, according to the Declaration. Otherwise what you have is just force. If government is just about force as step back states then there is no logical way to decide if what the government does is right (correct). Under that circumstance, discussing a patent system and what its merits are is meaningless. There is no standard. It would be like complaining the police used too much force. The police are force and if might makes right then whatever the police do is right. The discussion of inchoate rights is a detail about the implementation of securing legal rights. But if legal rights are just whatever those in power say are rights, then whatever the government decides is correct. In order for this discussion to have any meaning you have to have a standard separate from what is and you have to define words clearly.

  50. Anon June 2, 2013 8:48 pm


    Thanks. Yes I was not clear enough with the comment about enjoying the benefits. You are quite correct in that a “use” privilege is not consistent with the right to exclude, and for the very reason you provide: that an improvement patent does not provide the right to practice that which is exclusive to the base item from which the improvement is built upon.

    But there too, the idea still remains: exclusive is just that, exclusive. Not only to exclude, as you correctly note, but exclusive to just the inventor and to whom she allows. So in a very real sense, exclusive means no one else, and the question still remains: if no one else, wherefrom does this prior user gather the ‘right’ to violate this exclusivity? I am not sure that you are familiar with U.S. law prior to the AIA (for most everything outside business method patents, and those had a more limited PUR only recently – Ron Katznelson and I have had discussions on that subject), but traditional U.S. law very much had the basic notion of exclusivity meaning no one else beyond the patentee and whom she allowed.

    I do not know how to be more clear as to what I am asking than my post at 47 and this follow on post. No one else but the patent holder can touch the invention. The “keep off the grass” sign does not (did not) allow anyone else – even those who invented before (and I note that Dale did not address this point) to walk on the grass.

    I have been clear that this was the stick of patent law. This concept is well known here, and I apologize if I am not explaining it clearly enough for you to understand. I provided an analogy to help with the constitutional problem, that of limited times taken to mean forever. It is in the same vein that exclusive and allowing someone else beyond the choice of the inventor that the clash of time limits displays.

    If you still have trouble seeing the U.S. constitutional issue, I hope some other reader can pick up the challenge.


    Your single paragraph is difficult to follow. I suggest that you take a deep breath and compose a response that addresses the points that I have raised. For some reason, you still think I am ignoring principles that I am not ignoring. I am merely making proper distinctions under law.

    Quite in fact, it is you that is persisting in ignoring these critical legal distinctions. I have granted you that natural rights exist. But natural rights are inchoate rights – without power or force under the law. Are you really trying to tell me that inchoate and fully developed patent rights are the exact same thing? Please state this affirmatively and directly so that I am not misunderstanding you.

    Secondarily (and merely secondarily as other points in my posts point to serious problems with your legal construction notwithstanding this paragraph), you continue to attempt to place the declaration on the same legal standing as the constitution. Am I incorrect in this understanding?

    Do you realize that you hold an unorthodox legal view of this relationship?

    Returning now to inchoate rights. Your statement about inchoate rights being a detail about the implementation of securing legal rights is not clear. Your statement “ But if legal rights are just whatever those in power say are rights, then whatever the government decides is correct.” is a tautology. I suggest you read the recent Golan v Holder case to see just how much authority the Supreme Court recognizes that Congress has when it comes to this particular constitutional clause.

    Our discussion ONLY has meaning when you realize just who has the authority to define what it means to turn inchoate (natural) rights into fully functional legal rights. Congress does in fact have free reign about how to do that.

    You appear to be tilting at windmills by denying the authority that Congress has.

    I am not certain how to proceed in a discussion with you until you address the points I have raised – as I have raised them. Ranting about the meaninglessness of it all if I do not kowtow to a complete Libertarian viewpoint simply won’t do.

  51. Dale Halling June 2, 2013 9:36 pm


    No I am not placing the declaration on the same footing as the constitution. I am trying to get you to acknowledge the meaning of the word Right in Article 1, section 1, clause 8. Once you understand the context of that word you will understand congress is REQUIRED to create a patent system. To suggest otherwise is to completely ignore the whole historical context of the constitution, the declaration, the system of property rights, the structure of the constitution.

    You are hung up on inchoate rights, which is irrelevant. As I clearly explained, the drafters of the constitution clearly used the words right of inventors, before there was a patent system – this means they understood the word right separate from a legal right. Inchoate rights are only about the legal process of obtain title or right to something and therefore irrelevant to this discussion. Natural Rights are not inchoate, because that is a legal concept. Natural rights is an ethical system that defines what a government can and should do and is the basis of the USA. A Right is a moral statement about how governments should work and is used as a standard against which a government’s or people’s action is compared.

  52. Dale Halling June 2, 2013 10:20 pm


    Since you seem woefully ignorant of natural rights I will provide you a primer. Natural rights is a logical system based on the idea that you own yourself. (Much as Euclidean geometry is based on the idea that a straight line goes on forever and two parallel lines never interest) If you own yourself it is wrong for someone to kill you. That is where murder comes from. If you own yourself, then it is wrong for someone to enslave you. If you own yourself then you own the product of your labor. That is where property rights come from. This includes that if you create a new invention you have a right to that invention. This explains why theft is wrong and illegal. In fact it encompasses almost all of our basic property laws and our criminal laws.

    Now the founders were not entirely consistent, but that is how we know they were inconsistent on slavery. (The Pathegorans added a lot of knowledge to geometry, but they were wrong about irrational numbers, but that was how we know they were wrong) The purpose of the constitution was to setup a government that protected those natural rights. It provides a number of procedural rights to ensure your natural rights are protected. Anything that is logically inconsistent with natural rights is inconsistent with the constitution. Having a congress that did not protect the rights of inventors is inconsistent with natural law and the constitution. In fact Blackstone treatise on the law was informed by the system of natural rights.

  53. Anon June 2, 2013 10:59 pm

    Dale, I wonder why you deign to lecture me on natural rights while not recognizing what an inchoate right actually is.

  54. step back June 3, 2013 6:22 am

    I’m sorry Dale.

    You don’t “own” yourself.

    The Universe owns you.

    Entropy owns you.

    Hang all the “Do Not Trespass” signs as you wish around your body.
    The germs don’t care.
    The germs don’t read.
    Any day now your immune system will fail and then the microbes will win the war as they surely and invariably always do.

    You merely have a short “lease” on consciousness.
    Why waste it on this “Natural Rights” delusion?

    Why can’t you understand that Euclid might have been (and probably was) wrong?
    Rights is just a word. Infinity just a concept.
    Let’s hope our drones-controlling government keeps respecting the “rights” thing.
    Let’s hope our judges do not become part of the mindless zombie army.
    Too late.
    They already are.
    Go ask Alice (v. CLS):

  55. Anon June 3, 2013 6:57 am

    Not to be too Feisty, but that sweat of the brow ownership thing does not work too well, does it?

  56. Anon June 3, 2013 7:49 am

    Dale – in my post at 50, please read my comment of natural rights being inchoate rights only in the sense of this discussion, that is, pertaining to inventions.

    Other natural rights can differ in their legal status with some having immediate and full force of law. I am only discussing here those rights pertaining to intellectual property and the patent clause of the constitution.

  57. Anon June 3, 2013 9:18 am

    On point Dale, tell me what to make of the fact that Jefferson removed property from the Lockian triumvirate and replaced that category with pursuit of happiness?

  58. Dale Halling June 3, 2013 9:53 am

    step back,

    Gravity is just a word also, meter and second are also words, but whether you understand gravity or not, when you step off a 100 foot cliff you still die.

    Similarly, if you ignore natural rights they you can count on your country turning into a stalin, hilter or moa nightmare – and you being in gulag or dead – just as dead as if you ignored gravity.

  59. Dale Halling June 3, 2013 10:03 am


    As I understand it you are suggesting that because your rights (legal) are inchoate until congress acts, they you do not have rights in your invention. Again this confuses rights (moral) with rights (legal). The word right in the constitution is moral – about natural rights not legal rights. It is a statement telling congress that it is its job to protect the rights of inventors by creating a legal system for this. If you understand that the word right is a moral statement and you understand that is why governments are created, then you cannot say that congress may or may not protect the rights of inventors based on their whims.

    Just as the first amendment states that “the right of the people to peacably assemble” is not a statement of a legal right, it is a statement of moral right. Legal rights are only those which the government recognizes. Natural Rights are those that you have even if you government does not recognize them and by which you judge whether a government is doing its job.

  60. Anon June 3, 2013 10:05 am


    You continue to ignore that fact that law is not philosophy, as you persist in dwelling in the land of philosophy, ignoring the distinctions that I point out.

    I grant you that a metaphysical and philosophical discussion over a few pints would be enjoyable, but this is a blog concerning law, patent law, U.S. patent law in particular. Would you care to join this conversation?

  61. Dale Halling June 3, 2013 11:59 am

    This is a discussion regarding the Constitution and the meaning of the Constitution, which has nothing to do with inchoate rights and Everything to do with natural rights. You cannot discuss the law with reference only to the law-that is circular reasoning. You must start with a premise. What did the Founders mean by securing rights of inventors. A rational discussion of this leads to the fact that Congress must protect the rights of inventors. From your logic, I do not have a right to life because people go around killing each other daily.
    Natural Rights have real life consequences. See today’s Supreme Court Ruling:
    hear the jackboots coming?
    more real life consequences of natural rights or their lack:

  62. Dale Halling June 3, 2013 12:28 pm


    Jefferson removed the word “property” because of slavery.

  63. Anon June 3, 2013 1:03 pm


    And what does that tell you? For a law discussion (concerning property rights)?

  64. step back June 3, 2013 2:30 pm

    Dale re #58: agreed

    When one approaches the cliff one should consider the reality of gravity.
    Moral rights don’t help.
    Legal rights don’t help.
    Recognition of reality helps.

    Hence my moniker: step back

  65. Dale Halling June 3, 2013 3:24 pm

    Natural Rights have real life consequences. See today’s Supreme Court Ruling:
    hear the jackboots coming?
    more real life consequences of natural rights or their lack:

  66. MD June 3, 2013 4:40 pm

    Jackboots? Seriously?

    In New Guinea, they think taking a photo of your face robs you of your soul. We can all agree though, that when a Paparazzo does it, it robs you of your privacy. If it were put to SCOTUS, would it split 5:4 on the constitutionality of those new-fangled things we call cameras? Where’s the essential difference between that and your DNA?

  67. Dale Halling June 3, 2013 6:28 pm

    Yes Jackboots seriously,

    First of let’s look at traffic tickets. There is absolutely no evidence that they prevent accidents. Some studies show a very minor positive correlation, but several show negative correlations, including those that were natural experiments. So you have a violation of your 4th & 8th amendment rights, giving DNA is a clear violation of the 5th amendment. Keeping my picture or my finger prints or even taking them for a traffic ticket is a clear violation of the 4th amendment. If you keep them when I am not convicted of a crime then it is a violation of the 1st amendment and the 4th amendment.

    You would probably argue you have nothing to fear if you have done nothing wrong. Really? Tell that to the Jews in Nazi Germany or the Jews in the USSR. Or the Japanese in WWII in the good old USA.

    But this is America. Perhaps you are not paying attention to the IRS scandal, the Benghazi scandal, the EPA issue, Fast and Furious, etc. National databases are always used by governments to control and enslave people. The whole point of the constitution is to protect us from government – to protect our natural rights (see Declaration).

  68. step back June 3, 2013 6:36 pm

    @Dale #65

    I have not read the SCt. opinion today, but from what I hear 3rd party way –it is troubling that police can seize your DNA and do what they will with it, including planting it at the scene of a crime.

    However in terms of logic, a first wrong (unreasonable search and seizure) does not make a second wrong (natural rights) into a not wrong.

  69. Anon June 3, 2013 7:08 pm

    step back,

    Are you baiting Dale at 68? How am I ever going to have him return to a legal discussion if you are out to stir the pot and rile him up?

    That being said, the whole point of the constitution is NOT to protect us from government. True, that is an element, but there is far more to protecting us from ourselves as well as deciding on just how we want to rule ourselves (We the people, and all that).

    But can we return to discussing real patent law now?

  70. step back June 3, 2013 9:43 pm


    I submit that we have lost focus on any clear topic of discussion and now we are just rambling in the woods over differences of philosophy (e.g. the “Natural Rights” of them whom the Floundering Fatters considered to be only 3/5ths of a person and of them who were of the wrong gender and thus had no vote at all –those “Natural Rights”, as clearly set forth in the original Constitution and the “We” the People part of the Declaration of Independence) 😉