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