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What Kinds of Computer-Software-Related Advances (if Any) Are Eligible for Patents? Part II: The "Useful Arts" Requirement
September/October 2008 (vol. 28 no. 5)
pp. 64-70
In the previous issue, Stern traced the history of two "clues" to patent-eligibility: substance-transformation and device-implementation. This issue, he focuses on another clue to patent-eligibility that has received insufficient attention: the US Constitution's limitation of congressional power in the patent field to what it termed "the useful Arts." Stern explores that limitation and points out how it affects business-method patents.

1. Patent-eligibility refers to being the kind of thing on which a patent might be granted if the novelty, utility, and other statutory requirements for patent grant are met. Patentable things are a subset of patent-eligible things.
2. In re Nuitjen, 500 F.3d 1346 (Fed. Cir. 2007). Congress could make signals patent-eligible if it wanted to, without creating any constitutional problem. It simply didn't choose to do so. It is, essentially, an arbitrary omission without seeming policy significance.
3. Poetry and songs can be the subject of copyrights, however. Congressional power to pass copyright laws also comes from Article I, §8, clause 8 of the US Constitution.
4. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989) ("As we have noted in the past, the Clause contains both a grant of power and certain limitations upon the exercise of that power."); Graham v. John Deere Co., 383 U.S. 1 (1966). See also Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 349 (1991) (copyright is limited to original works of authorship).
5. Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966).
6. Graham, 383 U.S. at 6.
7. The Supreme Court held that Congress could not enact nonuniform bankruptcy laws in Railway Labor Executives Ass'n v. Gibbons, 455 U.S. 457 (1982), because the Constitution authorizes Congress to enact uniform bankruptcy laws.
8. The Supreme Court held that Congress could not protect nondiscoveries and nonwritings under the patent-copyright clause in The Trademark Cases, 100 U.S. 82, 94 (1879).
9. These patent-eligibility requirements were discussed in Part I of this column, Micro Law, IEEE Micro, vol. 28, no. 4, July/Aug. 2008, pp. 96, 92-95.
10. Ovid suggests that he will teach the reader such processes and terms himself the "professor of love" (ego sum praeceptor amoris). See, for example, Ars Amatoria, Book I, opening lines.
11. Henny Youngman is usually credited as the inventor of this expedient. See, for example, .
12. Slapstick-comedy routines ordinarily have specific device limitations, such as a paddle or cream pie, while the take-my-wife-please routine can be revised to add a nominal apparatus limitation, if that makes any difference, by designating the process one for making a large room of people laugh and by adding a microphone and sound system. Users of such processes are financially well rewarded for performing them, making the processes economically valuable (a supposed badge of patent-eligibility).
13. Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); Diamond v. Diehr, 450 U.S. 175 (1981). See Part I.
14. The language is that of Justice Stewart in Jacobellis v. Ohio, 378 U.S. 184, 197 (1964). This criterion should be not so much a positive legal test as an intuitive reality check.
15. 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). See Part I.
16. See Method and apparatus for automatically exercising a curious animal, US Patent 6701872, http://www.freepatentsonline.comUS6701872.html ; Method of exercising a cat, US Patent 5,443,036, http://www.freepatentsonline.com5443036.html ; Cat exercise toy, US Patent 5,657,721, http://www.freepatentsonline.com5657721.html .
18. K-Mart v. Cartier, 486 U.S. 281, 319 (1988) (Scalia, concurring in part and dissenting in part).
19. Neither Samuel Johnson nor Noah Webster, the principal lexicographers, defined "useful arts" in their dictionaries.
20. Flook, 437 U.S. at 588–89 ("The plain language of §101 does not answer the question. It is true, as respondent argues, that his method is a 'process' in the ordinary sense of the word. But that was also true of the algorithm, which described a method for converting binary-coded decimal numerals into pure binary numerals, that was involved in Gottschalk v. Benson. The holding that the discovery of that method could not be patented as a 'process' forecloses a purely literal reading of §101.").
21. This is the approach that the Supreme Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370, 376–82 (1996), suggests for deciding whether judges or juries should interpret the words of patent claims: You should look to practice in and preceding the 18th century.
22. The Writings of George Washington from the Original Manuscript Sources, 1745–1799(ed. J.C. Fitzpatrick, Library Reprints, 2007). Several other literary sources are collected in the PTO Supplemental Brief in Bilskiat 11 n.4 (supporting proposition that useful arts are manufacturing processes).
23. Other 18th-century sources equate the useful arts to manufacturing techniques. See, for example, T. Coxe, "An Address to an Assembly of the Friends of American Manufactures," in Calling for More Domestic Manufacturing(1787) at 17 (equating "useful arts" to "manufactures"); and at 18 (describing progress in the useful arts as having produced improvements in numerous kinds of manufactures); G. Logan, M.D., "A Letter to the Citizens of Pennsylvania, on the Necessity of Promoting Agriculture, Manufactures, and the Useful Arts," (1800) 12–13 (equating "useful arts" to manufacturing processes).
24. The first United States patent, granted to Samuel Hopkins (No. X1, issued July 31, 1790), was on a method of making potash. The next patent (No. X2, Aug. 6, 1790) issued to Joseph Sampson on a method of making candles. The only other 1790 patent (No. X3, Dec. 18) issued to Oliver Evans for flour-milling machinery.
25. See V.S. Clark, History of Manufactures in the United States, 1916, pp. 48–50; J. Leander Bishop, History of American Manufactures, 3d ed., 1868, p. 476.
26. A partial list follows of arts clearly recognized as within the useful arts in and around 1789: brick-making, manufacture of ceramics and silica-based products (including glass, porcelain, pottery, tiles), milling, shoemaking, smelting of metals, tanning, the arts of many kinds of smith (for example, blacksmith, goldsmith, silversmith, tinsmith), and many textile-related arts (for example, cloth-making, dyeing, fulling). See, for example, J. Bigelow, Elements of Technology(1831) (lectures on application of science to the useful arts).
27. See Graham, 383 U.S. at 5-6 (quoted in text).
28. Darcy v. Allen, 11 Co. Rep. 84b, 77 Eng. Rep. 1260 (K.B. 1603).
29. See Sears, Roebuck &Co. v. Stiffel Co., 376 U.S. 225, 229 (1964) (commenting on Darcy v. Allen).
30. An extensive list of "odious monopolies" is found in D. Hume, History of England, ch. 44, at 458 (1810 ed.). Another part of the Graham"backdrop" is the set of practices that common-law courts regarded as having pernicious effects similar to those of monopolies and therefore similarly abhorred and condemned. For example, engrossing—preempting the sale of goods or securing a monopoly of their sale. See Standard Oil Co. v. United States, 221 U.S. 1, 53-54 (1911). The Boston Tea Party, which Grahamsingles out, was a Yankee response to engrossing. See Standard Oil, 221 U.S. at 53-54.
31. See In re Toma, 575 F.2d 872 (CCPA 1978); In re Musgrave, 431 F.2d 882, 893 (CCPA 1970).
32. See Ex Parte Lundgren, 76 USPQ2d 1385, 1388 (Bd Pat Apps &Ints 2005) (precedential) ("Our determination is that there is currently no judicially recognized separate 'technological arts' test to determine patent eligible subject matter under §101. We decline to create one.").
33. See H.L. Barber, Story of the Automobile, pp. 58-59 (1917) (1787 Maryland patent on steam-propelled horseless carriage).
34. Joseph E. Seagram &Sons v. Marzall, 180 F.2d 26, (D.C. Cir. 1950).

Index Terms:
law, patents, patent-eligibility, device-implementation, useful arts, business-process patents, software patents
Richard Stern, "What Kinds of Computer-Software-Related Advances (if Any) Are Eligible for Patents? Part II: The "Useful Arts" Requirement," IEEE Micro, vol. 28, no. 5, pp. 64-70, Sept.-Oct. 2008, doi:10.1109/MM.2008.81
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