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What Kinds of Computer-Software-Related Advances (if Any) Are Eligible for Patents? Part I
July/August 2008 (vol. 28 no. 4)
pp. 96, 91-95
To what kinds of thing should the patent system apply is a question that has troubled the US courts since the middle of the 19th century. The grandiose dreams or delusions of Samuel Morse brought the question to the Supreme Court in 1850, when the validity of his patent on the telegraph was challenged. The author traces developments in the Court's decisions on patent eligibility from that case to the present, focusing particularly on the patentability of software and processes.

1. O'Reilly v. Morse, 56 US (15 How.) 62 (1853).
2. This was Morse's own language: "Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer."
3. An advance that is patent-eligibleis eligible to be considered for being granted a patent, based on whether it is novel, unobvious, adequately disclosed, and properly claimed. Thus, the advance may be patent-eligible and still fail to qualify for a patent grant because it is not novel. An advance that is patent-ineligible will not even be considered for patenting on the basis of novelty and so on. Computer programs and algorithms, per se, as contrasted with machines operated in accordance with a computer program or algorithm, for example, are patent-ineligible.
4. Gottschalk v. Benson, 409 US 63 (1972). See also Parker v. Flook, 437 US 584 (1978); Diamond v. Diehr, 450 US 175 (1981). Since this trilogy of cases, the Supreme Court has not rendered any decision on the limits of patent-eligibility.
5. Laboratory Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 US 124, 126 S. Ct. 2921 (2006); dissenting opinion of Justice Breyer, joined by Justices Stevens and Souter.
6. This occurs, for example, in the vulcanization of rubber by heating it in the presence of sulfur, which changes gummy, inelastic raw rubber into a hard, elastic product, by crosslinking the polymers.
7. In re Alappat, 33 F.3d 1526 (1994).
8. Section 101 of the patent code, 35 USC §101, limits the categories of things on which patents may be granted to any new and useful "process, machine, manufacture, or composition of matter." This language remains substantially unchanged from the first patent law in 1790.
9. State Street Bank &Trust Co. v. Signature Fin. Group Inc., 149 F.3d 1368 (Fed. Cir. 1998); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999).
10. Laboratory Corp. v. Metabolite Labs., Inc., 126 S. Ct. 2921, 2928 (2006); Justice Breyer dissenting from dismissal of certiorari.
11. In eBay Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006), Justice Kennedy, joined by Justices Stevens, Souter, and Breyer, suggested that the public interest might be better served by not granting injunctions in cases involving "the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times," because of "the potential vagueness and suspect validity of some of these patents." In Laboratory Corp. v. Metabolite Labs., Inc., Justice Breyer, joined by Justices Stevens and Souter, remarked that the Federal Circuit's State Streetdecision "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 then went on to question whether "the patent system, as currently administered and enforced, adequately reflects the careful balance that the federal patent laws embody."
12. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). The court ruled that a signal is not a process, machine, manufacture, or composition of matter. In principle, Congress could add signals to the list of patentable categories, but it has not chosen to do so. There would appear to be no constitutional obstacle to such legislation.
13. In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007).
14. That provision of the Constitution, Article I, §8, clause 8, states: "Congress shall have Power to promote the Progress of ...the useful Arts by securing for limited Times to...Inventors the exclusive Right to their ...Discoveries...."
15. Graham v. John Deere Co., 383 US 1, 5-6 (1966), (Constitution limits congressional power to enact patent laws); accord Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 US 141 (1989); see also Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 US 340, 349 (1991), (same for copyright).
16. See Parker v. Flook, 437 US 584, 593 (1978), ("The rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomena are not processes but rather on the more fundamental understanding that they are not the kind of 'discoveries' that the statute was enacted to protect.").
17. As used here, "device" means a machine, article of manufacture, or other physical material. Processes are usually performed by using a machine, but they may use other physical materials.
18. That is my translation of what the 1850 Supreme Court meant when it said that Morse's invention was his "plan for combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electromagnetism in long circuits." I interpret that to be limited to electromagnetic devices (relays) and as not including other forms of nonlinear amplification with hysteresis, for elevating signal above noise, such as Schmitt Triggers. (Hysteresis is needed to prevent instability in the form of "jitter.")
19. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 US 127 (1948).
20. Armour Pharm. Co. v. Richardson-Merrell, Inc., 396 F.2d 70, 74 (3d Cir. 1968).
21. See Flook, 437 US at 592.
22. They may, however, lack novelty or be obvious. Those are different issues.

Index Terms:
law, patents, software, patent eligibility, device-implementation test, business methods, PTO
Richard Stern, "What Kinds of Computer-Software-Related Advances (if Any) Are Eligible for Patents? Part I," IEEE Micro, vol. 28, no. 4, pp. 96, 91-95, July-Aug. 2008, doi:10.1109/MM.2008.62
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