Case 9: Gottschalk v. Benson (1972)
Benson et al. filed for a patent for converting binary coded decimal numbers into pure binary numbers in a method not specific to a certain application or apparatus. They attempted to claim for any use of their system in a general-purpose digital computer. The Supreme Courted granted certiorari to determine whether or not the claim constituted a "process" under U.S. patent law. The claims in question are algorithms, or procedures by which a computer may solve a mathematical problem. In this case, the algorithm converts numbers from one form to the other. New programs may be written based on this basic function of the computer.
The new system converts BCD numbers into pure binary numbers. This means that instead of creating a string of four ones or zeros to represent each individual place in a number, one string of several ones or zeros are used to signify a single, aggregate number. These calculations do not require any new technology or systems; old computers long in use may be used, as well as no computers at all.
Mackay stated that while neither scientific principles nor mathematical formulas may be patented, a new and useful structure developed from the knowledge of such a truth may be. This ruling was another expression of Rubber-Tip Pencil Co., which said in effect that scientific principles are fundamental truths and should not be the sole property of any one person or entity. Other concepts which fall under this category are "phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts." In Funk Bros. Seed Co., the Court stated that only new and useful applications of scientific principles may be patented. Though this patent deals with a "process" and the previous descriptions a "product," the Court applied the same standard.
The claim of a process to convert BCD to pure binary is a sweeping one. Anything from train operation to drivers' license verification can be performed using this process. In this way, the claim of the patent oversteps the boundaries of patent law. In a prior ruling, the Court held that such sweeping generalizations cannot be made because the same result of the application (i.e., the conversion of information) may someday be achieved by a differing process than the one described. The effect must be patented in regard to a particular process: you can't patent a function apart from the functioning product.
A process, however, may be patented regardless of the instruments used; if a process calls for grinding rock into a fine dust, then it doesn't matter how the rock is pulverized. In Cochrane, the court said that "a process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." The patentability of a process stems from its claims for transforming and reducing an article "to a different state or being" without calling for specific machinery.
The Court did not say that a process is never patentable if it either does not transform an article or is not tied to a particular machine. Nor did it say that no process can be patented for a computer. Nor is the Court meaning to freeze patents and ignore the new advent of electronic technology. Rather, the Court ruled that the formula used in this patent has no application outside of its connection to a computer. It is not a transformation of material, nor is the algorithm a new or useful application, nor is the method separable from its mathematical formula. Thus, if the Court granted this patent, it would for all intents and purposes be patenting a scientific law. While programs have not been patentable, there has still been progress made in this field. In addition, copyrights are available for these programs.
