Dealing with Controversial Patent Subjects

In my prior posts, I introduced the basic thesis of a forthcoming article: that courts should abandon all attempts to bar particular patents based solely on their subject matter.  I also discussed some of the problems, namely inconsistent (and impossible) application of such rules and introduced the solution: rigorous patentability.

This post applies rigorous patentability to a couple of subject areas as an example.

Natural Phenomena

It is nearly impossible to tell whether an invention is a natural phenomenon or an application of a natural phenomenon.  Perhaps the best example of this was Mackay Radio, in which the patentee claimed a radio antenna with wires set to specific lengths based on a well known discovery that wires set to those lengths were useful for receiving signals.  There could not be a more direct application of a natural phenomenon, but the Supreme Court did not invalidate the patent. Instead, it held that the patent claimed an application of the natural principle.

It did, however, limit the patentee to exactly the wire lengths described by the equation because no other lengths were described or enabled.  Thus, a competitor that slightly varied the lengths was held not to infringe.  In other words, rigorous patentability (specification) was used to limit the inventor.

This same rationale might be used to answer the vitamin deficiency question of Metabolite (discussed here).  A primary concern with the claim was that use of any homocysteine test satisfied the claim, even if such test wasn’t part of the patent.  However, it is important to note that no one had devised any way to measure homocysteines at all prior to the patent.  The question, then, is not about subject matter, but instead about whether the patentees described and enabled enough of a measurement test to claim the broad scope of the claim.  This is a question I can’t answer, but it is the direction we should be looking.

Computer Software and Mathematical Algorithms

Another problematic area is mathematical algorithms.  There is no good way to determine what is a “pure” algorithm and what is not.  Under rigorous patentability, though, we don’t have to answer that difficult question, nor should we try.  Instead, we ask whether the algorithm “does” something for purposes of utility.  An algorithm standing alone will be unpatentable because it achieves no useful end.  When put into software – which is admittedly a big series of algorithms – the whole program can become patentable because it becomes useful.

Business Methods

As an extension of computer software, business methods are processes used to perform non-manufacturing tasks, such as money management, sales transactions, or other steps that do not transform a physical object.  One type of business method under attack is the tax method patent – claims to tax savings by taking certain steps that minimize taxes under the Internal Revenue Code.

With rigorous patentability, these patents would be allowable subject matter, but few would actually issue.  Business methods are of the proper category – they are processes.  Note that nowhere in the Patent Act is a process required to work on physical objects, and the code explicitly defines a process [Section 100(b)] to include a new use for an existing machine.   Well, inventing a new use for a computer fits that bill. 

Even so, most business methods will run into other patentability problems.  First, computerizing something that is known to be done without a computer is obvious – the Supreme Court addressed this 30 years ago in Dann v. Johnston.  Even if the task was never done manually, it might still be obvious if it is something anyone skilled in the area might think of if only they had a computer (online auctions, for example).  Even then, strict written description and enablement requirements mean that in order to claim a broad business method one would have to really show that he or she had invented the entire field – something that is difficult. 

Evidence bears this out – despite being considered patentable subject matter, a very small percentage of business methods patents actually issue.

These are just three simple examples – there are more in the paper.  My next post will discuss a thorny issue – DNA patenting.