January 27, 2010

Patentable Subject Matter—Software Included?

2 min

Although Chief Justice Warren E. Burger wrote that patentable subject matter includes “anything under the sun that is made by man," as technology advances, the definition of patentable subject matter is always revisited (Diamond v. Chakrabarty, 447 U.S. 303 (1980)). The patent statute defines a patentable invention as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement " (35 U.S.C. §101). Recently, the Board of Patent Appeals and Interferences added its own two cents with regard to a machine or article of manufacture.

In Ex parte Gutta (App. No. 2008-4366), the Board structured a two-part test for determining whether a mathematical algorithm is patentable subject matter as a machine or article of manufacture under §101. The Board conglomerates the focal points from other notable Board decisions, Supreme Court decisions, and Federal Circuit decisions into a single two-part test. It characterizes the inquiry as follows:

For a claimed machine (or article of manufacture) involving a mathematical algorithm:

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

If the machine (or article of manufacture) claim fails either prong of the two-part inquiry, then the claim is not directed to patent eligible subject matter. (Emphasis Added)

Although Ex parte Gutta was decided in August of 2009, the Board in December of 2009 marked the case as “precedential” – an infrequent occurrence. It is important to consider Ex parte Gutta in claiming mathematical algorithms, such as software claims, because a “precedential opinion” creates authority for future Board decisions to follow.