| Gottschalk v. Benson | ||||||||||||||
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| Argued October 16, 1972 Decided November 20, 1972 |
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| Holding | ||||||||||||||
| Respondents' method for converting numerical information from binary-coded decimal numbers into pure binary numbers, for use in programming conventional general-purpose digital computers is merely a series of mathematical calculations or mental steps and does not constitute a patentable "process" within the meaning of the Patent Act, 35 U. Diamond v Diehr,, was a US Supreme Court decision which held that the execution of a Process, controlled by running a Computer program was Diamond v Chakrabarty,, was a United States Supreme Court case dealing with whether genetically modified micro-organisms can be Patented S. C. 100 (b). Pp. 64-73. | ||||||||||||||
| Court membership | ||||||||||||||
| Chief Justice: Warren E. Burger Associate Justices: William O. Douglas, William J. Brennan, Jr., Potter Stewart, Byron White, Thurgood Marshall, Harry Blackmun, Lewis F. Powell, Jr., William Rehnquist |
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| Case opinions | ||||||||||||||
| Majority by: Douglas Joined by: Burger, Brennan, White, Marshall, Rehnquist Stewart, Blackmun, and Powell took no part in the consideration or decision of the case. Warren Earl Burger ( September 17 1907 – June 25 1995) was Chief Justice of the United States from 1969 to 1986 William Orville Douglas ( October 16, 1898 – January 19, 1980) was a United States Supreme Court Associate Justice. William Joseph Brennan Jr ( April 25, 1906 &ndash July 24, 1997) was an Associate Justice of the Supreme Court of the Potter Stewart ( January 23 1915 &ndash December 7 1985) was an Associate Justice of the United States Supreme Court. Byron Raymond White ( June 8, 1917 &ndash April 15, 2002) won fame both as a football Running back and as an associate justice of Thurgood Marshall ( July 2, 1908 – January 24, 1993) was an American Jurist and the first African American Harry Andrew Blackmun ( November 12, 1908 &ndash March 4, 1999) was an Associate Justice of the Supreme Court of the United States Lewis Franklin Powell Jr ( September 19, 1907 &ndash August 25, 1998) was an Associate Justice of the Supreme Court of the William Hubbs Rehnquist (October 1 1924 – September 3 2005 was an American lawyer, jurist, and a political figure who served as an Associate Justice |
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| Laws applied | ||||||||||||||
| 101 of the Patent Act of 1952 | ||||||||||||||
Gottschalk v Benson , was a United States Supreme Court case that ruled that a process involving a numerical algorithm was not patentable if "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself". Year 1972 ( MCMLXXII) was a Leap year starting on Saturday (link will display full calendar of the Gregorian calendar. The Supreme Court of the United States is the highest judicial body in the United States and leads the federal judiciary. In Mathematics, Computing, Linguistics and related subjects an algorithm is a sequence of finite instructions often used for Calculation A patent is a set of Exclusive rights granted by a State to an inventor or his assignee for a fixed period of time in exchange for a disclosure of an The court added "it is said that the decision precludes a patent for any program servicing a computer. We do not so hold. " The case was argued on October 16, 1972 and was decided November 20, 1972. Events 456 - Magister militum Ricimer defeats the Emperor Avitus at Piacenza and becomes master of the western Year 1972 ( MCMLXXII) was a Leap year starting on Saturday (link will display full calendar of the Gregorian calendar. Events 284 - Diocletian was chosen as Roman Emperor. 762 - Bögü Khan of the Uyghurs,
Contents |
Prior history
The case revolves around an application for a patent for method for converting a binary-coded decimal (BCD) numerals into pure binary numerals on a general purpose digital computer. A patent application is a request pending at a Patent office for the grant of a Patent for the Invention described and claimed by that application The patent examiner at the United States Patent and Trademark Office rejected the patent application as being directed to a mathematical expression. A patent examiner or patent clerk is an Employee, usually a civil servant, working within a Patent office. The United States Patent and Trademark Office ( PTO or USPTO) is an agency in the United States Department of Commerce that issues Patents to Pure mathematical expressions had been held to be unpatentable under earlier patent laws in Mackay Co. v. Radio Corp. . The applicant appealed to the Board of Patent Appeals and Interferences. The Board of Patent Appeals and Interferences (BPAI is a body of the United States Patent and Trademark Office (USPTO which decides issues of Patentability. The Board affirmed the examiner’s rejection. The applicant further appealed to the Court of Customs and Patent Appeals. CCPA may also refer to the Canadian Centre for Policy Alternatives The United States Court of Customs and Patent Appeals (CCPA began as the United The Court reversed the Board. Finally, the Commissioner of Patents and Trademarks filed a petition for a writ of certiorari to the Supreme Court. Certiorari (ˌsɚʃioʊ('rɛri 'rɑri is a legal term in Roman, English, Philippine and American law referring to a type of Writ
The case
The law which is applicable to this case is section 101 of the Patent Act of 1952. The question was whether or not the claimed invention was a “process” under the law. Patent claims are usually in the form of a series of specified elements and corresponding limitations or more precisely Noun phrases following the description portion of the An invention is a new form composition of matter device or Process. The court held that because the claim was not limited to any particular type of programmable digital computer and because the method could be carried out mentally, that the claim would effectively preclude use of the method for any currently known or future invention in any field. Thus the claim was directed to an algorithm alone and therefore was not patentable.
Impact
This decision was widely seen as confirming that software by itself was not directly patentable. What patent attorneys/agents had been doing in the meantime, however, was to get patent protection on software inventions by claiming both the algorithm in combination with the computer carrying out the algorithm. A patent attorney is an Attorney who has the specialized qualifications necessary for representing clients in obtaining Patents and acting in all matters and procedures Thus they were technically claiming a new machine and this was held to be patentable. [1]
The boundary between when a computer implemented process is purely an abstract idea (and thus not patentable) and when it is a practical process (and thus is patentable) is still a matter of debate within the US patent office. (“The Supreme Court has not been clear . . . . . . as to whether such subject matter is excluded from the scope of 101 because it represents laws of nature, natural phenomena, or abstract ideas. “)[2]
Notes
- ^ Section 101 says, "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. " Section 100(b) gives the definition for process, "The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. "[2]
See also
References
- ^ "To Promote the Progress of . . . Useful Arts," Report of the President's Commission on the Patent System (1966). as cited in Gottschalk v Benson
- ^ 2106.02 Mathematical Algorithms - 2100 Patentability Manual of Patent Examining Procedure 8th ed. This is a list of all the United States Supreme Court cases from volume 409 of the United States Reports: O'Brien v The Manual of Patent Examining Procedure (MPEP is a manual published by the United States Patent and Trademark Office (USPTO for use by patent attorneys and
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