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A Different Kind of Battle At the USPTO Over 35 U.S.C. 101

By Peter Zura

Back in 2005 (just prior to today's "great patentable subject matter debate"), a certain buzz was created when Andrew Knight began promoting the idea of "storyline patents" and followed up by filing applications (e.g., 10/722,463) in pursuit of his goal of establishing a new form of intellectual property. An exemplary claim from his application:

1. A process of relaying a story having a timeline and a unique plot involving characters, comprising:

indicating a character's desire at a first time in said timeline for at least one of the following:

a) to remain asleep or unconscious until a particular event occurs; and

b) to forget or be substantially unable to recall substantially all events during the time period from said first time until a particular event occurs;

indicating said character's substantial inability at a time after said occurrence of said particular event to recall substantially all events during the time period from said first time to said occurrence of said particular event; and

indicating that during said time period said character was an activeparticipant in a plurality of events.

It turns out that the "storyline" application recently received a first office action, and the PTO is taking the matter quite seriously: almost 8 pages of the office action are directed to constitutional arguments (including prior restraint of expression under the 1st amendment), 4 pages on section 101, and an interesting 103(a) argument, rejecting the claims "over any movie recorded on a DVD."

From the Office Action:

It should also be pointed out that storylines are not subject to improvement. Storylines may be changed, but not improved. Adding a plot element involving a white rabbit in a top hat would not improve Huckleberry Finn; it would merely make it different. Nothing in a storyline patent application can be used by other practitioners to advance the storytelling art. Thus storyline patents would not carry out the constitutionally mandated purpose behind the patent laws - i.e., to promote the progress of science and the useful arts.

Under current law, if a potential author reads a Narrative of the Most Extraordinary and Distressing Shipwreck of the Whale-Ship Essex and thinks he can do a better job telling the story, he may make an attempt. Thus the public gets two versions of the story from which to choose - Owen Chase's or Herman Melville's. But under the proposed scheme, it is unlikely that the public would have either version. Instead of writing the great American novel, existence of a storyline patent would create an incentive for potential authors to write the great American patent application. This is hardly the result that the framers of the Constitution had in mind.

Also, under a footnote:

Some people are critical of the patent system because there are people who have patents for invention they have no intention of making or using. Examiner will not join in this debate, but will make two observations:

(1) To the extent that this represents a problem, it would be unwise to add to the problem by creating yet another class of intellectual property to be held by those who are not going to make or use their invention.

(2) In defense of the holders of patents for inventions currently patentable, they at least provide an increase in human knowledge upon which others can improve. If A. Lincoln invents a device for lifting boats over shoals, others can improve upon the invention - whether Lincoln builds such a device or not. Thus science and technology advance. Storyline patents, on the other hand, are not amenable to "improvement".

Read the Office Action in its entirety here.

Read Knight's (68 page) Response here.

Full post as published by Two-Seventy-One Patent Blog on June 27, 2008 (boomark / email).