Are software patents “. . . anything under the sun made by man . . .”?

© 2006 Peter S. Menell

Professor Peter S. MenellBoalt Hall School of Law

Berkeley Center for Law & TechnologyUniversity of California at Berkeley

U.S. Patent

Software Patents: A Time for a Change?

Boston November 2006Panel on Legal Perspectives

U.S. Patent U.S. Patent

Business Method

Software Patent Timeline

1972 1978 1981 1998

Gottschalk v. Benson“wholly preempt an

algorithm”

Parker v. Flook program-related invention not patentable if point of novelty is software step

Diamond v. DiehrGuts Benson and Flook

Process as a whole patentable regardless of software element

State Street Bank“useful, concrete, and

tangible result”

Diamond v. Diehr logic

I. Unless otherwise defined, “words will be interpreted as taking their ordinary, contemporary, common meaning.”

II. 1793 Patent Act defined statutory subject matter as “any new and useful art, machine, manufacture or composition of matter . . .”

III. 1952 Patent Act replaced “art” with “process”

IV. 1952 Patent Act intended statutory subject matter to “include anything under the sun made by man.” H.R. Rep. No. 1923 at 6

V. Under ordinary, contemporary (1981) parlance:

software = process = art software patentable

Patent Subject Matter Timeline

Patent Act of 1793

“any new and useful art, machine, manufacture or composition of matter”

“art” = manufacturing processCurtis

A Treatise on the Law of Patents

1873

Walker on

Patents

1937

Deller’s Edition

• must produce physical effects• heat, light, electricity, magnetism, chemical action; physical change• “industrial arts” • “specific force”• mental steps doctrine

Judicial Interpretation

Patent Act of 1952

§ 101 Subject matter

Simplification and Clarification

§ 103 Nonobviousness

§ 271 Contributory Infringement

Substantive Change

Patent Subject Matter Timeline

Patent Act of 1793

“any new and useful art, machine, manufacture or composition of matter”

Judicial Interpretation“art” = manufacturing process

Curtis

A Treatise on the Law of Patents

1873

Walker on

Patents

1937

Deller’s Edition

• must produce physical effects• heat, light, electricity, magnetism, chemical action; physical change• “industrial arts” • “specific force”• mental steps doctrine

Patent Act of 1952

“any new and useful process, machine, manufacture or composition of matter”

U.S. Patent U.S. Patent

Business Method

1952 Patent Act: Legislative History

“Art” “Process” • to avoid confusion

NOT INTENDED TO EXPAND PATENTABLE SUBJECT MATTER

U.S. ConstitutionArticle I §8, cl. 8

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

Congress shall have powerPrior “art”

all limiting doctrines apply

1952 Patent Act:Legislative History

• to make clear that new uses were patentable

Section 100(b): Definition of Process

• rejects Thuau doctrine (barring patents for new uses)

The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material

U.S. Patent U.S. Patent

Business Method

1952 Patent Act:Legislative History

A person may have “invented” a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

Section 101 sets forth the subject matter that can be patented, “subject to the conditions and requirements of this title.” The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.

H.R. Rep. No. 1923 at 6

“anything under the sun that is made by man”

Customary Interpretation More Plausible Meaning• patentable subject matter is expansive

• merely emphasizes that “all conditions and reqts” of Title 35 must be met for patentability

• Congress intended to retain all judicial subject matter limitations

• applies only to “machines” and manufactures” and not “processes” or “compositions of matter”

• everything except:• mathematical formula• scientific principle• phenomenon of nature

1952

Understanding of “Process”

• must produce physical effects

• “industrial arts”

• “specific force”

• mental steps doctrine

Legal Perspective Technical Perspective

Computer Software?

Programming? Assembly language

• no intention to expand scope

Fortran (first high level programming language) would not emergeuntil 1954

“Process” Time Warp

Hindsight Bias

“words will be interpreted as taking their ordinary, contemporary, common meaning.”

1952 1981

Computer software

= process

• must produce physical effects

• “industrial arts”

• “specific force”

• mental steps doctrine

Diamond v. Diehr logicDiamond v. Diehr (il)logic

I. Unless otherwise defined, “words will be interpreted as taking their ordinary, contemporary, common meaning.”

II. 1793 Patent Act defined statutory subject matter as “any new and useful art, machine, manufacture or composition of matter . . .”

III. 1952 Patent Act replaced “art” with “process”

IV. 1952 Patent Act intended statutory subject matter to “include anything under the sun made by man.” H.R. Rep. No. 1923 at 6

V. Under ordinary, contemporary (1981) parlance:

software = process = art software patentable

?

?

?

[. . .]

State Street Bank: Compounding the Errors

II. Supreme Court has acknowledged that patentability extends to “anything under the sun made by man.”

III. Narrow limitations: laws of nature, natural phenomena, and abstract ideas

IV. Relies on Federal Circuit expansion: Arrhythmia Research Tech, Alappat

Giles Rich

I. Repetitive use of “any” expansive scope §101

V. Lowers threshold to: “useful, concrete, and tangible result”

failure to include full quotation

?

?

?

?

?

Giles Rich

ACMEDiaper Service

Section 101 denies patent protection “to one of the greatest inventions of our times, the diaper service.”

Giles Rich, “The Principles of Patentability,” 28 Geo. Wash. L. Rev. 393 (1960)

We take this opportunity to lay th[e] ill-conceived [business method] exception to rest. . . . Since the 1952 Patent Act, business methods have been . . . subject to the same legal requirements for patentability as applied to any other process

State Street Bank v. Signature Financial Group, Inc.,

149 F.3d 1368 (Fed. Cir. 1998)

U.S. Patent U.S. Patent

Business Method