Software patents under United States patent law
Encyclopedia
Software or computer programs are not explicitly mentioned in United States patent law
. In the face of new technologies, decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit
(CAFC) in the latter part of the 20th century sought to redefine the boundary between patent-eligible and patent-ineligible subject matter, in a way that seemed to deviate from Supreme Court
precedent. These CAFC decisions for at least a time resulted in the United States becoming more open to the patenting of software than that of other countries. More recent decisions of the CAFC, however, such as In re Bilski
, seem to indicate a return to the patent-eligibility law of the 1970s and early 1980s, which were dominated by the Supreme Court's patent-eligibility trilogy, taking a more limited view of what kind of technological advance could be patented, based on pre-computer precedents going back to the mid-19th century.
(CCPA) were at odds over the patent-eligibility of technical advances whose departure from the prior art
was only in the use of a software algorithm. The USPTO rejected such claims and declined to patent them, but the CCPA repeatedly reversed the USPTO's rulings and ordered the issuance of patents. The USPTO's position was hampered during the 1960s by the uncertainty over whether the Supreme Court could review decisions of the CCPA, because it was unclear whether it was an Article III court. That question was resolved, however, in Brenner v. Manson, in which the Court held that it had certiorari
jurisdiction to review CCPA decisions. That decision also began a string of decisions in which the Supreme Court reversed decisions of the CCPA, and then its successor court the United States Court of Appeals for the Federal Circuit
(CAFC), which had reversed decisions of the USPTO denying a patent to an applicant.
In the first of the Supreme Court's computer software decisions (the "patent-eligibility trilogy"), Gottschalk v. Benson
, the Court reversed the CCPA's reversal of a USPTO decision denying a patent on an algorithm for converting binary-coded decimal numbers into pure binary numbers. In so ruling, the Court looked back to 19th century decisions such as O’Reilly v. Morse
, which held that abstract ideas could not be made the subject of patents. The Court's 1978 ruling in Parker v. Flook
, was similar in principle. These cases also established that the "clue" to whether a patent might be granted on a process was whether the process was carried out with a particular apparatus or else effectuated a transformation of an article from one state or thing to another state or thing. In Flook, where the sole departure from the prior art was concededly the formula or algorithm, no transformation was alleged, and it was conceded that the implementing apparatus was old or conventional, the process was simply not the kind of process that could be patented.
In the 1981 case of Diamond v. Diehr
, the United States Supreme Court upheld the CCPA's reversal of the USPTO, and ordered the grant of a patent on an invention, a substantial part of which involved use of a computer program which used a well-known formula (the Arrhenius Equation
) for calculating the time when rubber
was cured and the mold could therefore be opened. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm
, but a process for molding rubber, which was therefore patentable. In the Diehr case, there was no concession that the implementation was conventional, and the process did effectuate a transformation of substances (from uncured rubber to cured rubber).
After this point, more patents on software began to be granted, albeit with conflicting and confusing results. After its creation in 1982, the CAFC charted a course that tried to follow the Diehr precedent. Patents were allowed only if the claim included some sort of apparatus, even rather nominal apparatus at times, such as an analog-to-digital converter front end, or in one case a scratch-pad memory for storing intermediate data. A representative decision from this period is In re Schrader, in which the CAFC set forth probably its best and most detailed formulation of the rule it was attempting to follow.
Dissatisfaction with the perceived artificiality of this rule erupted, however, in rulings beginning with the en banc 1994 decision in In re Alappat, in which the CAFC majority held that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a "new machine", which is patentable. This ruling was followed up in In re Lowry, which held that a data structure representing information on a computer's hard drive or memory is similarly to be treated as a patent-eligible physical device. Finally, in State Street Bank v. Signature Financial Group, the CAFC ruled that a numerical calculation that produces a "useful, concrete and tangible result", such as a price, is patent-eligible.
The USPTO's reaction to this change was, for the time being at least, to "throw in the towel." The Clinton
administration appointed Bruce Lehman
as Commissioner of the USPTO in 1994. Unlike his predecessors, Lehman was not a patent lawyer but the chief lobbyist for the Software Publishing Industry. In 1995, the USPTO established some broad guidelines for examining and issuing software patents. The USPTO interpreted the courts as requiring the USPTO to grant software patents in a broad variety of circumstances. Although the U.S. Congress has never legislated specifically that software is patentable, the broad description of patentable subject in the Patent Act of 1952 and the failure of Congress to change the law after the CAFC decisions allowing software patents, was interpreted as an indication of Congressional intent. The reaction of the defeated-feeling USPTO was characterized in the cartoon shown at right, which appeared in IEEE Micro
at this time.
The United States Supreme Court remained silent on these decisions and developments for years. The first response appeared in a [ dissenting opinion] in LabCorp v. Metabolite, Inc
(2006). Although certiorari had been granted, the Court dismissed it as improvidently granted; the minority argued that the question of statutory subject matter in patent law should be addressed. Justice Breyer
's dissent stated:
He continues to directly address the claim that software loaded onto a computer is a physical device:
At about the same time, in a concurring opinion in eBay Inc. v. MercExchange, L.L.C., Justice Kennedy (joined by Justices Stevens, Souter, and Breyer)questioned the wisdom of permitting injunctions in support of "the burgeoning number of patents over business methods," because of their "potential vagueness and suspect validity" in some cases.
This was followed by the decision of the CAFC in In re Bilski
, which has opened a new chapter in this history. In Bilski, as the article on that case explains, the CAFC superseded State Street and related decisions with a return to the tests of the patent-eligibility trilogy, although while those decisions had merely treated the machine-or-transformation test
as the clue to past decisions the CAFC now made that test dispositive.
United States patent law
United States patent law was established "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;" as provided by the United States Constitution. Congress implemented these...
. In the face of new technologies, decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
(CAFC) in the latter part of the 20th century sought to redefine the boundary between patent-eligible and patent-ineligible subject matter, in a way that seemed to deviate from Supreme Court
Supreme court
A supreme court is the highest court within the hierarchy of many legal jurisdictions. Other descriptions for such courts include court of last resort, instance court, judgment court, high court, or apex court...
precedent. These CAFC decisions for at least a time resulted in the United States becoming more open to the patenting of software than that of other countries. More recent decisions of the CAFC, however, such as In re Bilski
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
, seem to indicate a return to the patent-eligibility law of the 1970s and early 1980s, which were dominated by the Supreme Court's patent-eligibility trilogy, taking a more limited view of what kind of technological advance could be patented, based on pre-computer precedents going back to the mid-19th century.
Law
Section 101 of title 35, United States Code, provides:- 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.
History
In the late 1960s and early 1970s, the USPTO and the United States Court of Customs and Patent AppealsUnited States Court of Customs and Patent Appeals
The United States Court of Customs and Patent Appeals is a former United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.-History:...
(CCPA) were at odds over the patent-eligibility of technical advances whose departure from the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
was only in the use of a software algorithm. The USPTO rejected such claims and declined to patent them, but the CCPA repeatedly reversed the USPTO's rulings and ordered the issuance of patents. The USPTO's position was hampered during the 1960s by the uncertainty over whether the Supreme Court could review decisions of the CCPA, because it was unclear whether it was an Article III court. That question was resolved, however, in Brenner v. Manson, in which the Court held that it had certiorari
Certiorari
Certiorari is a type of writ seeking judicial review, recognized in U.S., Roman, English, Philippine, and other law. Certiorari is the present passive infinitive of the Latin certiorare...
jurisdiction to review CCPA decisions. That decision also began a string of decisions in which the Supreme Court reversed decisions of the CCPA, and then its successor court the United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
(CAFC), which had reversed decisions of the USPTO denying a patent to an applicant.
In the first of the Supreme Court's computer software decisions (the "patent-eligibility trilogy"), Gottschalk v. Benson
Gottschalk v. Benson
Gottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
, the Court reversed the CCPA's reversal of a USPTO decision denying a patent on an algorithm for converting binary-coded decimal numbers into pure binary numbers. In so ruling, the Court looked back to 19th century decisions such as O’Reilly v. Morse
O’Reilly v. Morse
O'Reilly v. Morse, also known as The Telegraph Patent Case, is an 1853 decision of the United States Supreme Court that has been highly influential in the development of the law of patent-eligibility in regard to claimed inventions in the field of computer-software related art...
, which held that abstract ideas could not be made the subject of patents. The Court's 1978 ruling in Parker v. Flook
Parker v. Flook
Parker v. Flook, was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent-eligible only if the implementation is novel and unobvious. The algorithm itself must be considered as if it were part...
, was similar in principle. These cases also established that the "clue" to whether a patent might be granted on a process was whether the process was carried out with a particular apparatus or else effectuated a transformation of an article from one state or thing to another state or thing. In Flook, where the sole departure from the prior art was concededly the formula or algorithm, no transformation was alleged, and it was conceded that the implementing apparatus was old or conventional, the process was simply not the kind of process that could be patented.
In the 1981 case of Diamond v. Diehr
Diamond v. Diehr
Diamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
, the United States Supreme Court upheld the CCPA's reversal of the USPTO, and ordered the grant of a patent on an invention, a substantial part of which involved use of a computer program which used a well-known formula (the Arrhenius Equation
Arrhenius equation
The Arrhenius equation is a simple, but remarkably accurate, formula for the temperature dependence of the reaction rate constant, and therefore, rate of a chemical reaction. The equation was first proposed by the Dutch chemist J. H. van 't Hoff in 1884; five years later in 1889, the Swedish...
) for calculating the time when rubber
Rubber
Natural rubber, also called India rubber or caoutchouc, is an elastomer that was originally derived from latex, a milky colloid produced by some plants. The plants would be ‘tapped’, that is, an incision made into the bark of the tree and the sticky, milk colored latex sap collected and refined...
was cured and the mold could therefore be opened. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm
Algorithm
In mathematics and computer science, an algorithm is an effective method expressed as a finite list of well-defined instructions for calculating a function. Algorithms are used for calculation, data processing, and automated reasoning...
, but a process for molding rubber, which was therefore patentable. In the Diehr case, there was no concession that the implementation was conventional, and the process did effectuate a transformation of substances (from uncured rubber to cured rubber).
After this point, more patents on software began to be granted, albeit with conflicting and confusing results. After its creation in 1982, the CAFC charted a course that tried to follow the Diehr precedent. Patents were allowed only if the claim included some sort of apparatus, even rather nominal apparatus at times, such as an analog-to-digital converter front end, or in one case a scratch-pad memory for storing intermediate data. A representative decision from this period is In re Schrader, in which the CAFC set forth probably its best and most detailed formulation of the rule it was attempting to follow.
Dissatisfaction with the perceived artificiality of this rule erupted, however, in rulings beginning with the en banc 1994 decision in In re Alappat, in which the CAFC majority held that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a "new machine", which is patentable. This ruling was followed up in In re Lowry, which held that a data structure representing information on a computer's hard drive or memory is similarly to be treated as a patent-eligible physical device. Finally, in State Street Bank v. Signature Financial Group, the CAFC ruled that a numerical calculation that produces a "useful, concrete and tangible result", such as a price, is patent-eligible.
The USPTO's reaction to this change was, for the time being at least, to "throw in the towel." The Clinton
Bill Clinton
William Jefferson "Bill" Clinton is an American politician who served as the 42nd President of the United States from 1993 to 2001. Inaugurated at age 46, he was the third-youngest president. He took office at the end of the Cold War, and was the first president of the baby boomer generation...
administration appointed Bruce Lehman
Bruce Lehman
Bruce A. Lehman served from August 5, 1993 through 1998 as the United States Under Secretary of Commerce for Intellectual Property and Commissioner of the United States Patent and Trademark Office . Nominated by President Bill Clinton on April 23, 1993, and confirmed by the United States Senate on...
as Commissioner of the USPTO in 1994. Unlike his predecessors, Lehman was not a patent lawyer but the chief lobbyist for the Software Publishing Industry. In 1995, the USPTO established some broad guidelines for examining and issuing software patents. The USPTO interpreted the courts as requiring the USPTO to grant software patents in a broad variety of circumstances. Although the U.S. Congress has never legislated specifically that software is patentable, the broad description of patentable subject in the Patent Act of 1952 and the failure of Congress to change the law after the CAFC decisions allowing software patents, was interpreted as an indication of Congressional intent. The reaction of the defeated-feeling USPTO was characterized in the cartoon shown at right, which appeared in IEEE Micro
IEEE Micro
IEEE Micro is a broad-based practitioner-oriented magazine of the IEEE Computer Society targeting small system and semiconductor chip professionals, including electronic engineers, designers, architects, developers, process improvement experts, testers, quality engineers, and project managers...
at this time.
The United States Supreme Court remained silent on these decisions and developments for years. The first response appeared in a [ dissenting opinion] in LabCorp v. Metabolite, Inc
LabCorp v. Metabolite, Inc
LabCorp v. Metabolite, Inc. is a court case related to the patentability of scientific principles which the U.S. Supreme Court agreed to hear, and later dismissed, in 2006....
(2006). Although certiorari had been granted, the Court dismissed it as improvidently granted; the minority argued that the question of statutory subject matter in patent law should be addressed. Justice Breyer
Stephen Breyer
Stephen Gerald Breyer is an Associate Justice of the U.S. Supreme Court. Appointed by President Bill Clinton in 1994, and known for his pragmatic approach to constitutional law, Breyer is generally associated with the more liberal side of the Court....
's dissent stated:
"[State Street] does say that a process is patentable if it produces a 'useful, concrete, and tangible result.' But this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary."
He continues to directly address the claim that software loaded onto a computer is a physical device:
"...And the Court has invalidated a patent setting forth a process that transforms, for computer-programming purposes, decimal figures into binary figures-even though the result would seem useful, concrete, and at least arguably (within the computer's wiring system) tangible."
At about the same time, in a concurring opinion in eBay Inc. v. MercExchange, L.L.C., Justice Kennedy (joined by Justices Stevens, Souter, and Breyer)questioned the wisdom of permitting injunctions in support of "the burgeoning number of patents over business methods," because of their "potential vagueness and suspect validity" in some cases.
This was followed by the decision of the CAFC in In re Bilski
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
, which has opened a new chapter in this history. In Bilski, as the article on that case explains, the CAFC superseded State Street and related decisions with a return to the tests of the patent-eligibility trilogy, although while those decisions had merely treated the machine-or-transformation test
Machine-or-transformation test
In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies to be considered for patenting if it is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way...
as the clue to past decisions the CAFC now made that test dispositive.
Landmark decisions
- Diamond v. DiehrDiamond v. DiehrDiamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
- State Street Bank v. Signature Financial Group
- In re BilskiIn re BilskiIn re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
See also
- Machine-or-transformation testMachine-or-transformation testIn United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies to be considered for patenting if it is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way...
- Software patentSoftware patentSoftware patent does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program".In 2005, the European Patent Office...
- Software patent debateSoftware patent debateThe software patent debate is the argument dealing with the extent to which it should be possible to patent software and computer-implemented inventions as a matter of public policy. Policy debate on software patents has been active for years. The opponents to software patents have gained more...
- Software patents under the European Patent ConventionSoftware patents under the European Patent ConventionThe patentability of software, computer programs and computer-implemented inventions under the European Patent Convention is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973...
- Software patents under TRIPs AgreementSoftware patents under TRIPs AgreementThe WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights , particularly Article 27, is occasionally referenced in the political debate on the international legal framework for the patentability of software, and on whether software and computer-implemented inventions should be...
- Limitations on exclusive rights: Computer programsLimitations on exclusive rights: Computer programsIn United States copyright law, Limitations on exclusive rights: Computer programs, section 117 of the US Copyright Act, in its current form was created as a direct result of CONTU....
(United States copyright law)
Further reading
- Ben Klemens, Math You Can't Use: Patents, Copyright, and Software. Brookings Institution Press, 2005.
- Manual of Patent Examining Procedure, Chapter 2100