Gottschalk v. Benson, 409 U.S. 63 (1972) Notes

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not patentable because its an algorithm and algorithms cant be patentable

too elementary level of knowledge to get patent - too broad


§ 100. Definitions

How Current is This? When used in this title unless the context otherwise indicates—

(a) The term “invention” means invention or discovery.

(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

(c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.

(d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.

[1]


§ 101. Inventions patentable

How Current is This? Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

[2]


The Case

related "to the processing of data by program and more particularly to the programmed conversion of numerical information" in general-purpose digital computers. They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.

  • PTO rejects claims 8, 13
  • Court of Patent Appeals sustains claims 8, 13
  • Now this court reverses, says not patentable??

Question: Is the method described a "process" as Patent Act describes it?

  • method varies the way a human would convert decimal to binary (make it more efficient?)
  • have to apply method to useful end if going to be patentable
  • really can't patent a process, but rather the application of it
  • need definite bounds to patent
  • 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." Id., at 787-788.
  • must either be tied to particular machine/apparatus, or change material to different state or thing
    • not saying NOTHING that doesn't meet this can get a patent
    • but in this case, there is no practical application other than use in digital computer
    • thus would be patenting the algorithm and can't do that
  • maybe the patent law should be changed for programs, but we can't say, need congress to do that
  • we can't classify these program applications
  • and programs have gotten along fine without patents so they can keep doing that for a while