Intellectual Property
What Do You
Mean My ComputerImplemented Idea
Is Not Eligible For
Patent Protection?
The Evolving Landscape
of Patent Eligible
Subject Matter
U
nder authority from the U.S. Constitution, Congress has purposefully constructed a broad
definition of what constitutes patent-eligible subject matter. 35 U.S.C. Section 101 defines
statutory subject matter as “any new and useful process, machine, manufacture, or composi-
tion of matter, or any new and useful improvement thereof.” This embodies Thomas Jefferson’s philosophy that “ingenuity should receive a liberal encouragement.” See Writings of Thomas Jefferson
75-76 (Washington ed. 1871). Moreover, a review of historical documents informs us that Congress
intended statutory subject matter to “include anything under the sun that is made by man.” S Rep. No
1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952). The America
Invents Act of 2011 leaves the language of Section 101 unchanged.
Yet, Section 101 has its limits and does not embrace every discovery. The courts have carved out
exceptions to the general rule and have held that: the laws of nature; physical phenomena; and abstract
ideas are not eligible for patent protection. See Parker v. Flook, 437 U. S. 584 (1978); Gottschalk v.
Benson, 409 U.S. 63, 409 U. S. 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127,
333 U.S. 130 (1948). “Phenomena of nature, though just discovered, mental processes, and abstract
intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”
Gottschalk, supra at 409 U.S. 67. As a result, the discovery of a new organism naturally occurring in the
wild is not eligible for patent protection. Likewise, laws of nature, such as those discovered by Newton,
are not eligible for patent protection. Inde ed, such ideas and natural occurrences are “manifestations
of…nature, free to all men and reserved exclusively to none.” Funk, supra at 333 U.S. 130.
As technology advances, where to draw the line between ideas and/or discoveries that are eligible for
patent protection and those that are not is more and more difficult to define. The implementation of
computers into inventions, which is becoming increasingly more prominent, is further complicating
By Brandt D. Madsen
the issue. Computers have led to many new and improved business practices and computer-implemented processes. But at what point is the inclusion of a computer in an invention merely the acceleration of an abstract idea? In other words, at what point does the computer-implemented process
fall outside the realm of patent eligible subject matter and into the excluded territory of an abstract
idea? And, related thereto, when, if ever, does the presence of a computer in a patent claim lend patent
eligibility to an otherwise patent-ineligible idea? These questions do not have clearly defined answers,
but the courts have attempted to provide guidance as they continuously grapple with the evolving
landscape of technology and how it is shaping the definition of patent-eligible subject matter.
In 2008, the U.S. Court of Appeals for the Federal Circuit (CAFC) addressed the issue of patent
eligibility of process/method claims, and more specifically business method claims. In re Bilski addressed whether a claimed method of hedging risks in commodities trading via a fixed bill system was
patent-eligible subject matter or merely the manipulation of an abstract idea that solved a purely mathematical problem without any limitation to a practical application. The opinion set forth a legal test for
determining patent-eligible subject matter as it relates to processes, which is: “[a] claimed process is
Brandt D. Madsen is an associate intellectual
property attorney in the law firm Schmeiser, Olsen & Watts LLP and is based in the firm’s Mesa,
Arizona office. He represents clients in intellectual property litigation and in all stages of patent and trademark prosecution. He focuses his
practice in the areas of the mechanical-related
arts. Brandt earned a J.D. from the Franklin
Pierce Law Center (now The New Hampshire
School of Law) with concentrations in intellectual property law (cum laude) and a B.S. in
mechanical engineering from Brigham Young
University. For questions or for more information please email [email protected], or
call (480) 655-0073.
surely patent-eligible under [Section] 101 if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing.” Using this “machine-or-transformation”
test, the CAFC upheld the previous decision of patent ineligibility on the grounds that the claimed
method neither required a machine in its operation nor transformed a particular article to a different
state or thing. The CAFC further stated that this two-branch test should be considered all-inclusive.
The patent community feared the CAFC’s Bilski opinion signaled the death of the business method
claim and retroactively invalidated many existing business method patents. However, in 2010, the
U.S. Supreme Court took up the issue on appeal, in Bilski v. Kappos, 561 U.S. ___ (2010), and, while
upholding the ultimate decision of the lower court, rejected the machine-or-transformation test as the
sole test of process patent eligibility.
Since then, courts have attempted to further frame the proper context for evaluating patent eligibility,