Patent-Eligible Inventions Quiz

PDF page 43: Title 35 of the United States Code (the Patent Act) allows anyone who invents or discovers any new, nonobvious, and useful machine, manufacture, process, or composition of matter—or who makes an xliii improvement of any of the above—to obtain a patent. xliv These four kinds of patentable inventions fall into one of two categories: They are products or processes.

PDF page 43: Title 35 of the United States Code (the Patent Act) allows anyone who invents or discovers any new, nonobvious, and useful machine, manufacture, process, or composition of matter—or who makes an xliii improvement of any of the above—to obtain a patent. xliv These four kinds of patentable inventions fall into one of two categories: They are products or processes.

PDF page 43: Products are physical things—whether they be machines (a new type of robotic welder), manufactures (an artificial knee made of titanium), or compositions of matter (a new chemical “superglue” for binding materials together). In this photo, Elon Musk observes the robotic arms in the Tesla Motors factory. Specialized manufacturing equipment like this are patentable products. Processes (or methods), on the other hand, are a means to an end—either a means of doing something new (being able to pay for purchases directly from your smartphone), or a new way of doing something old (using “pinch, swipe, and zoom” gestures on a touchscreen, rather than clicking drop-down menus, to manipulate text, music, and images on a smartphone).

PDF page 43: Products are physical things—whether they be machines (a new type of robotic welder), manufactures (an artificial knee made of titanium), or compositions of matter (a new chemical “superglue” for binding materials together). In this photo, Elon Musk observes the robotic arms in the Tesla Motors factory. Specialized manufacturing equipment like this are patentable products. Processes (or methods), on the other hand, are a means to an end—either a means of doing something new (being able to pay for purchases directly from your smartphone), or a new way of doing something old (using “pinch, swipe, and zoom” gestures on a touchscreen, rather than clicking drop-down menus, to manipulate text, music, and images on a smartphone).

PDF page 44: All patented inventions fit into one of these four categories: machine, manufacture, process, or composition of matter. But not everything that fits in one of these four categories can be patented. And the most important reason why one thing is patentable and another is not lies in the difference between ideas and applications. You cannot patent an idea for a better mousetrap—not unless it can be developed into a new, non-obvious, and useful machine, manufacture, process, or composition of matter that can actually accomplish the task. You may have a genius idea for faster-than-light travel, but that will not get you a patent unless you can outline how to develop a tangible process or device for actually doing so, in which case you can seek to patent it. Put another way, “talk is cheap” when it comes to securing a patent. The U.S. Patent and Trademark Office offers no judgment as to the wisdom or desirability of any particular invention—patent No. 2,882,858 for a bird diaper is certainly proof of that. But it absolutely will insist that every invention include a tangible device or process for achieving its intended purpose before it deems the invention worthy of a patent.

PDF page 44: All patented inventions fit into one of these four categories: machine, manufacture, process, or composition of matter. But not everything that fits in one of these four categories can be patented. And the most important reason why one thing is patentable and another is not lies in the difference between ideas and applications. You cannot patent an idea for a better mousetrap—not unless it can be developed into a new, non-obvious, and useful machine, manufacture, process, or composition of matter that can actually accomplish the task. You may have a genius idea for faster-than-light travel, but that will not get you a patent unless you can outline how to develop a tangible process or device for actually doing so, in which case you can seek to patent it. Put another way, “talk is cheap” when it comes to securing a patent. The U.S. Patent and Trademark Office offers no judgment as to the wisdom or desirability of any particular invention—patent No. 2,882,858 for a bird diaper is certainly proof of that. But it absolutely will insist that every invention include a tangible device or process for achieving its intended purpose before it deems the invention worthy of a patent.

PDF page 44: There are other discoveries that fall into the broad category of abstract ideas and are thus unpatentable. You 2 cannot patent a mathematical formula. You cannot patent a law of nature, such as Einstein’s E=MC . And you cannot patent natural phenomena like electricity (discovered by William Gilbert in 1600) or the Higgs particle that gives all matter its mass (discovered by researchers at the Large Hadron Collider on July 4, 2012). These all exist independently of human intervention, whether we have discovered them or formulated their rules yet or not, and must be freely available to all of humanity for its understanding and betterment.

PDF page 45: The federal courts and the U.S. Supreme Court have tried to clarify the limits of patentability in the computer age. Three Supreme Court cases in particular—often called the “patent-eligibility trilogy”—reveal the evolution of its thinking about software patentability. In 1972, the Supreme Court held in Gottschalk v. Benson (https://openstax.org/l/Gottschalk_v_Benson) that an algorithm in a computer program—in this case, a mathematical procedure executed electronically that was similar to long division with paper and pencil—was in and of itself not patentable. Phenomena of nature, mental processes, and abstract intellectual concepts are the basic tools of scientific and technical research, the court noted, and therefore could not be patented lest it foreclose others from using the algorithm and thereby stifle rather than promote technological progress. Granting a patent in this case, the court said, would be analogous to having granted Samuel Morse a patent covering all possible uses of electromagnetism in communications, rather than for the specific method and apparatus he actually invented. The court made a point of saying, however, that its decision did not mean that computer software could not be patented—only that software whose only useful characteristic was an abstract algorithm could not be patented. The Supreme Court further refined its thinking on software patentability in the 1978 case Parker v. Flook (https://openstax.org/l/Parker_v_Flook). Unlike the attempt to patent all uses of an algorithm in the Benson

PDF page 46: case, here the use of a software algorithm was limited to a specific application—setting off an alarm during the catalytic chemical conversion of hydrocarbons. This was a specific and tangible use of an algorithm, but the Court still ruled the software unpatentable because it felt the application itself was not inventive.

PDF page 46: Taken together, the three rulings appeared for a time to arrive finally at a coherent definition of software patentability—namely, that although algorithms by themselves are abstract concepts and therefore unpatentable, software programs may be patented if they employ algorithms to produce a tangible and inventive or transformative result. This view was further augmented by a 1998 U.S. Court of Appeals for the Federal Circuit decision in State Street Bank v. Signature Financial Group (https://openstax.org/l/ StateStreet_v_Signature), which extended software patentability to software-enabled methods of doing business so long as these produced a “useful, concrete, and tangible result.” But this definitional equilibrium was not to last. The “useful, concrete, and tangible result” test in State Street Bank was rejected ten years later by the same court in In re Bilski (https://openstax.org/l/InreBilski), which upheld the USPTO’s denial of a patent for a method of hedging risk in commodities trading. The court instead offered a “machine or transformation” test, which allows a software program or business method to be patented only if it is implemented on a specific machine to achieve a special purpose that is novel, nonobvious, and useful; it transforms an article from one thing or state to another. But in its review of Bilski v. Kappos (https://openstax.org/l/Bilski_v_Kappos), the Supreme Court ruled that while the “machine or transformation” test was useful, it was not the only test for patentability. In addition to the “machine or transformation” test, the court decreed (rather vaguely) that any future test should be “grounded in the examples and concepts” expressed in its original “patent-eligibility trilogy” of opinions. They thus reaffirmed that business methods may indeed be patentable.

PDF page 46: But then in June of 2014, The Supreme Court issued what may prove to be its most consequential decision on the patentability of software in the 33 years since Diamond v. Diehr. In Alice v. CLS Bank, the Court ruled that taking some activity that people have been doing for centuries—in this case, holding funds in escrow until a transaction is completed—and then merely “doing it through a computer” did not turn this age-old activity into a patentable new invention. At first, many observers believed that the effects of the Alice v. CLS Bank ruling would be very limited. Only the patent in the suit was invalidated, after all, not all software patents. What’s more, the abstract reasoning of the court in its decision did not provide clarity on how the ruling may or may not apply to other kinds of software patents—for example, the sort of software used in manufacturing that was ruled patentable in the 1981 Diamond v. Diehr case.

PDF page 47: As John Cronin, a former top inventor at IBM and now the CEO of the innovation-on-demand firm ipCreate, observes: “The highest-value products and services today—the ones that increasingly drive margins in business—involve cloud computing, Big Data, machine learning, connectivity, mobility and location-based services, and on-demand and anything-as-a-service software applications and business processes. But ironically, these high-value innovations are also the most difficult to patent nowadays as a result of the Supreme Court’s Alice decision.” Cronin calls this the “Alice Paradox,” and it has left many in-house patent groups struggling for a solution. One thing is clear: To be patentable nowadays, software has to take a genuinely-inventive step and either trigger an action, employ a device, or in some other way produce a tangible transformative result.