EB: GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)

The Situation

• Benson develops a "method for converting numerical information from binary-coded decimal numbers into pure binary numbers."
• Gottschalk is the commissioner of patents who originally rejected the patent, Benson appealed and won - Supreme Court grants centiorari

Decision

• Benson's patent is invalid (sustaining the examiners original decision, but reversing the Appeals court decision)

Reasoning

• You can't patent an idea - if you discover a "phenomenon of nature" you can't claim a monopoly on it unless you apply the law of nature to a "new and useful end"
  • The claims of Benson's patent were sweeping - claiming all rights to the process developed (whether by a computer or by hand)
• A process is patentable if it transforms or reduces the subject matter to a "different state or thing"
  • Benson's patent would "wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself."
    • In other words, Benson's patent is for a mathematical formula/algorithm, and these are ruled to be ideas, which alone are not patentable
• Important outcome: You can't patent a computer program (as of 1972)

In Class

• Key issue: Section 101 - patentable subject matter - "process, machine, manufacture, or composition of matter"
  • Composition of matter = new material, polymer...
  • Machine = pretty straight forward, device, gizmo...
  • Process = the tricky part
• You can appeal a patent examiners decision during the application process - that is what happened here; appealed to the Court of Customs and Patent Appeals
• Binary-coded decimal: you can represent every number with a sequence of four 0's and 1's - then you can just combine those sequences
  • The patent in question converts BCD to pure binary notation (a more condensed form)

• The Supreme Courts reasoning:
  • An idea cannot be patented; you can't patent a mathematical principle or "law of nature" because doing so would impede progress - however, you can seek a patent on a "new and useful" application of such a principle or "law of nature"
• There are certain "first principles" that are necessary building blocks for all progress in the art - so, if someone were to own those "first principles" it would halt all progress - this is not the intension of the patent system

• Can't patent:
  • Scientific truth
  • Mathematical expression of a scientific proof
  • Idea
  • Phenomenon of nature (even if newly discovered)
  • Process resulting in change or transformation of material

• Can patent:
  • Structure created with knowledge of a scientific truth
  • Application of a law of nature

• Example: Morse cannot patent the idea/law of nature of electromagnetism, but can patent the application of it to a useful process (Morse code)

• End result: Bureaucracy of patent office does not have the capability to handle the many cases involving similar computer programs, thus at this point they ruled that such subject matter is unpatentable - and advises Congress to look into it further