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

U.S. Patent. Software Patents: A Time for a Change?. Panel on Legal Perspectives. Boston November 2006. Are software patents “. . . anything under the sun made by man . . .”?. Professor Peter S. Menell Boalt Hall School of Law Berkeley Center for Law & Technology

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

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  1. U.S. Patent Software Patents: A Time for a Change? Panel on Legal Perspectives Boston November 2006 Are software patents “. . . anything under the sun made by man . . .”? Professor Peter S. Menell Boalt Hall School of Law Berkeley Center for Law & Technology University of California at Berkeley © 2006 Peter S. Menell

  2. U.S. Patent Business Method U.S. Patent “anything under the sun that is made by man” Section 101 “process”

  3. Software Patent Timeline Diamond v. Diehr Guts Benson and Flook Process as a whole patentable regardless of software element Parker v. Flook program-related invention not patentable if point of novelty is software step State Street Bank “useful, concrete, and tangible result” Gottschalk v. Benson “wholly preempt an algorithm” 1972 1978 1981 1998

  4. software patentable 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

  5. Patent Act of 1793 “any new and useful art, machine, manufacture or composition of matter” Curtis Walker on Patents A Treatise on the Law of Patents Deller’s Edition 1873 1937 Patent Subject Matter Timeline Judicial Interpretation “art” = manufacturing process • must produce physical effects • heat, light, electricity, magnetism, chemical action; physical change • “industrial arts” • “specific force” • mental steps doctrine

  6. Patent Act of 1952 Simplification and Clarification Substantive Change § 101 Subject matter § 103 Nonobviousness § 271 Contributory Infringement

  7. Patent Act of 1952 Patent Act of 1793 “any new and useful art, machine, manufacture or composition of matter” “any new and useful process, machine, manufacture or composition of matter” Curtis Walker on Patents A Treatise on the Law of Patents Deller’s Edition 1873 1937 Patent Subject Matter Timeline Judicial Interpretation “art” = manufacturing process • must produce physical effects • heat, light, electricity, magnetism, chemical action; physical change • “industrial arts” • “specific force” • mental steps doctrine

  8. U.S. Patent Business Method U.S. Patent “anything under the sun that is made by man” Section 101 “process”

  9. U.S. Constitution Article I §8, cl. 8 “Art” “Process” Congress shall have power 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. all limiting doctrines apply 1952 Patent Act: Legislative History • to avoid confusion Prior “art” NOT INTENDED TO EXPAND PATENTABLE SUBJECT MATTER

  10. 1952 Patent Act: Legislative History Section 100(b): Definition of Process The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material • to make clear that new uses were patentable •rejects Thuau doctrine (barring patents for new uses)

  11. U.S. Patent Business Method U.S. Patent “anything under the sun that is made by man” Section 101 “process”

  12. 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 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.

  13. • everything except: • mathematical formula • scientific principle • phenomenon of nature “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 • applies only to “machines” and manufactures” and not “processes” or “compositions of matter” • Congress intended to retain all judicial subject matter limitations

  14. Legal Perspective Technical Perspective Fortran (first high level programming language) would not emerge until 1954 1952 Understanding of “Process” • must produce physical effects Computer Software? • “industrial arts” Programming? Assembly language • “specific force” • mental steps doctrine • no intention to expand scope

  15. “Process” Time Warp Hindsight Bias • must produce physical effects Computer software = process • “industrial arts” • “specific force” • mental steps doctrine 1952 1981 “words will be interpreted as taking their ordinary, contemporary, common meaning.”

  16. Diamond v. Diehr(il)logic 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

  17. I. Repetitive use of “any” expansive scope §101 Giles Rich State Street Bank: Compounding the Errors ? ? II. Supreme Court has acknowledged that patentability extends to “anything under the sun made by man.” failure to include full quotation ? III. Narrow limitations: laws of nature, natural phenomena, and abstract ideas ? IV. Relies on Federal Circuit expansion: Arrhythmia Research Tech, Alappat ? V. Lowers threshold to: “useful, concrete, and tangible result”

  18. ACME Diaper Service 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 Section 101 denies patent protection “to one of the greatest inventions of our times, the diaper service.” Giles Rich Giles Rich, “The Principles of Patentability,” 28 Geo. Wash. L. Rev. 393 (1960) State Street Bank v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)

  19. U.S. Patent Business Method U.S. Patent “anything under the sun that is made by man” Section 101 “process”

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