Gottschalk v. Benson
Encyclopedia
Gottschalk v. Benson, was a United States Supreme Court
case in which the Court ruled that a process claim directed to a numerical algorithm
, as such, was not patent
able because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the Nineteenth Century. The Court added "it is said that the decision precludes a patent for any program servicing a computer. We do not so hold." The case was argued on October 16, 1972 and was decided November 20, 1972.
for a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals
on a general purpose digital computer. The patent examiner at the United States Patent Office, now called the United States Patent and Trademark Office
or PTO, rejected the patent application as being directed to a mathematical expression. Pure mathematical expressions had been held to be unpatentable under earlier patent laws in Mackay Co. v. Radio Corp., . The applicant appealed to the Board of Patent Appeals and Interferences
. The Board affirmed the examiner’s rejection. The applicant further appealed to the Court of Customs and Patent Appeals
. The Court reversed the Board. Finally, the Commissioner of Patents and Trademarks filed a petition for a writ of certiorari
to the Supreme Court.
. The question was whether or not the claim
ed invention
was a “process” under the law. The Court held that because the claim was not limited to any particular type of programmable digital computer and neither involved special purpose implementing machinery nor a transformation of substances, as in all prior cases holding processes patentable, the claim would effectively preclude use of the method for any currently known or future invention in any field. Thus the claim was directed to an algorithm alone and therefore was not patentable.
The Government, in its brief to the Supreme Court, asked the Court to hold that no process could be patented unless it claimed either a transformation of substances or was implemented with a newly devised machine. The Court held that those criteria were "clues" to patent-eligibility but declined to hold that they were necessary conditions for patent-eligibility in all cases, even though every case in which the Supreme Court had approved a process patent thus far had involved such a process.
s/agents had been doing in the meantime, however, was to get patent protection on software inventions by claiming the algorithm in combination with the general purpose digital computer programmed to carry out the algorithm. Thus they technically purported to be claiming a new machine and this, the lower patent court held, was patentable.
The boundary between when a computer implemented process is purely an abstract idea (and thus not patentable) and when it is a process implementing the idea in a practical way (and thus is patentable) is still a matter of debate within the US patent office. (“The Supreme Court has not been clear . . . . . . as to whether such subject matter is excluded from the scope of 101 because it represents laws of nature, natural phenomena, or abstract ideas.“) It also remains a contested issue whether process patent claims must be directed to a transformation of substances or else embody a nontrivial, novel implementing machine or device. The PTO has taken this position in its arguments to the United States Court of Appeals for the Federal Circuit. See USPTO brief in In re Bilski
. The Government also so argued in briefing the Benson case. The majority opinion in the Federal Circuit's opinion in In re Bilski adopts this position.
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
case in which the Court ruled that a process claim directed to a numerical algorithm
Algorithm
In mathematics and computer science, an algorithm is an effective method expressed as a finite list of well-defined instructions for calculating a function. Algorithms are used for calculation, data processing, and automated reasoning...
, as such, was not patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
able because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the Nineteenth Century. The Court added "it is said that the decision precludes a patent for any program servicing a computer. We do not so hold." The case was argued on October 16, 1972 and was decided November 20, 1972.
Prior history
The case revolves around an application for a patentPatent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
for a method for converting binary-coded decimal
Binary-coded decimal
In computing and electronic systems, binary-coded decimal is a digital encoding method for numbers using decimal notation, with each decimal digit represented by its own binary sequence. In BCD, a numeral is usually represented by four bits which, in general, represent the decimal range 0 through 9...
(BCD) numerals into pure binary numerals
Binary numeral system
The binary numeral system, or base-2 number system, represents numeric values using two symbols, 0 and 1. More specifically, the usual base-2 system is a positional notation with a radix of 2...
on a general purpose digital computer. The patent examiner at the United States Patent Office, now called the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
or PTO, rejected the patent application as being directed to a mathematical expression. Pure mathematical expressions had been held to be unpatentable under earlier patent laws in Mackay Co. v. Radio Corp., . The applicant appealed to the Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
. The Board affirmed the examiner’s rejection. The applicant further appealed to the Court of Customs and Patent Appeals
United States Court of Customs and Patent Appeals
The United States Court of Customs and Patent Appeals is a former United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.-History:...
. The Court reversed the Board. Finally, the Commissioner of Patents and Trademarks filed a petition for a writ of certiorari
Certiorari
Certiorari is a type of writ seeking judicial review, recognized in U.S., Roman, English, Philippine, and other law. Certiorari is the present passive infinitive of the Latin certiorare...
to the Supreme Court.
The case
The law which is applicable to this case is section 101 of the Patent Act of 1952Patent Act of 1952
The U.S. Patent Act of 1952 clarified and simplified existing U.S. patent law. It also effected substantive changes, including the incorporation of the requirement for invention and the judicial doctrine of contributory infringement The U.S. Patent Act of 1952 clarified and simplified existing...
. The question was whether or not the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
was a “process” under the law. The Court held that because the claim was not limited to any particular type of programmable digital computer and neither involved special purpose implementing machinery nor a transformation of substances, as in all prior cases holding processes patentable, the claim would effectively preclude use of the method for any currently known or future invention in any field. Thus the claim was directed to an algorithm alone and therefore was not patentable.
The Government, in its brief to the Supreme Court, asked the Court to hold that no process could be patented unless it claimed either a transformation of substances or was implemented with a newly devised machine. The Court held that those criteria were "clues" to patent-eligibility but declined to hold that they were necessary conditions for patent-eligibility in all cases, even though every case in which the Supreme Court had approved a process patent thus far had involved such a process.
Impact
This decision was widely seen as confirming that software by itself was not directly patentable. What patent attorneyPatent attorney
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
s/agents had been doing in the meantime, however, was to get patent protection on software inventions by claiming the algorithm in combination with the general purpose digital computer programmed to carry out the algorithm. Thus they technically purported to be claiming a new machine and this, the lower patent court held, was patentable.
The boundary between when a computer implemented process is purely an abstract idea (and thus not patentable) and when it is a process implementing the idea in a practical way (and thus is patentable) is still a matter of debate within the US patent office. (“The Supreme Court has not been clear . . . . . . as to whether such subject matter is excluded from the scope of 101 because it represents laws of nature, natural phenomena, or abstract ideas.“) It also remains a contested issue whether process patent claims must be directed to a transformation of substances or else embody a nontrivial, novel implementing machine or device. The PTO has taken this position in its arguments to the United States Court of Appeals for the Federal Circuit. See USPTO brief in In re Bilski
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
. The Government also so argued in briefing the Benson case. The majority opinion in the Federal Circuit's opinion in In re Bilski adopts this position.