Chapter 7: Patent Protection of Software:
Introduction to Software Patent Cases

Economics and Legal Background of Patent
Protection for Software Related Inventions

Excerpt from PTO Materials -- 58 Fed. Reg. 66,347 (Dec. 20, 1993)

Over the past decade, the computer software industry has evolved into a critical component of the U.S. economy. It is presently the fastest growing industry in the United States, with 1992 sales in the three core elements of the software industry programming services, prepackaged software and computer integrated design accounting for over $36.7 billion of our domestic gross product. The software industry has risen at an annual rate of 6.6 percent and today, the industry employs about 4 percent of the American work force.

The dynamic nature of the U.S. software industry has also served to propel the U.S. firms into a dominant position in the global software industry. U.S. firms hold abut 75 percent of the global market for prepackaged software and approximately 60 percent of the world market for software and related services. In 1991, foreign sales of U.S. pre packaged software vendors totaled over $19.7 billion.

Constant innovation has been the key to continued success in the U.S. software industry. As such, it is imperative that our domestic intellec tual property systems not only provide an effective stimulus for innovation, but also provide appropriate and effective means for protecting those innovations. Indeed, the continued success of U.S. firms, in both domestic and foreign markets, depends directly on the availability of effective mechanisms to protect software innovations. Without such means, the full value of American innovation cannot be realized.

Intellectual property systems provide the means through which software innovations can be both encouraged and protected. The present framework of intellectual property laws provides three basic forms of legal protection that are most relevant to the development and protection of software; namely, copyrights, patents and trade secret protection. Detailed reviews of each of these forms of protection can be found in the 1992 Office of Technology Assessment report entitled Finding a Balance: Computer Software, In tellectual Property and the Challenge of Technological Change (OTA-TCT-527), and in the Final Report of the Advisory Commission on Patent Law Reform to the Secretary of Commerce (1992). A brief synopsis of these three forms of protection follows.

Software code is protected under copyright law as an original work of authorship. Copyright protection stems automatically from the act of fixation of a work onto a tangible medium. A copyright gives its owner the ability to control the reproduction, adaptation, public distribution, public display and public performance of the software code. Copyrights can be used to prevent others from copying the software program, either through direct duplication or through appropriation of the software program, either through direct duplication or through appropriation of the software's expressive (as opposed to functional) elements. Under U.S. law, copyright owners can also prevent the unauthorized rental of software. Copyright protection cannot be used to prevent the use by others of the functional aspects of software, nor can it be used as a basis for action against independently developed software. In addition, the fair use doctrine under copyright law provides third parties some flexibility in their use of copyrighted works.

Patents can be used to protect processes implemented using software, as well as computer based systems. The statutory definition of inventions that are eligible to receive patent protection is found in section 101 of title 35, United States Code. This section makes patents available for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." To obtain patent protection, the inventor must apply for protection and proceed through an examination process before the Patent Trademark Office (PTO). The examination process is used to assess whether the invention for which protection is sought meets all of the statutory criteria for patentability; namely, that the invention is eligible for protection, that it is new, that it is not obvious to a person familiar with the technical field of the invention, and that the invention has been adequately described in the patent application. Patent protection allows the patent holder to preclude others from making, using or selling the patented invention, as it has been defined in the patent claims, for a period of seventeen years measured from the date the patent is granted. Importantly, the party granted a patent must take action to enforce rights provided under the patent--the issuance of a patent does not automatically preclude infringing activity. In addition, the Federal courts have developed a limited exception to liability for infringement for non-commercial experimental use of inventions described in patents. Additional information on the patent process is available in the Manual of Patent Examining Procedure (MPEP), in particular, chapters 600, 700 and 100.

Finally, certain aspects of soft ware can be protected through use of trade secrecy and contractual licens ing agreements. Protection of trade secrets in the United States is governed by state, rather than Federal, law. Trade secret laws typically require the party asserting a trade secret right to take reasonable steps to prevent the public disclosure of the information held as a trade secret. Accidental or other public disclosure of a trade secret will eliminate the protection. Absent such disclosure, the trade secret rights will remain effective indefinitely. Trade secret rights can be enforced against parties that unlawfully obtain the information held as a trade secret.

The question of patent protection for software-related inventions has engendered a significant amount of public debate. For example, concern has been expressed over the appropriate scope of eligible subject matter (e.g., which aspects of software-related inventions should be eligible for patent protection for inventions in which the main distinguishing characteristic is a software component. Some guidance on the question of patent eligibility has been provided by the Federal courts. First, the Supreme Court has instructed the lower courts to interpret the eligibility standards for patent protection broadly. In Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), the Court stated:

The committee reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting "the progress of science and the useful arts". Congress employed broad language in drafting Section 101 precisely because such inventions are often unforeseeable.

Second, the Supreme Court has held that the mere presence of a computer software-implemented mathematical algorithm in an invention does not automatically preclude the invention from being eligible to receive patent protection. Diamond v. Diehr, 450 U.S. 175 (1981). Finally, through interpretation of the exclusions from patentable subject matter under section 101 of title 35, United States Code, the Supreme Court and the lower federal courts have provided guidance in determining which aspects of software-related inventions are eligible for patent protection. There are three general categories of exclusion to patent eligibility that are particularly relevant to software-related inventions. The first, and most commonly applied exclusion, is the exclusion of mathematical algorithms, per se, from patent eligibility. For a summary of the law governing this exclusion, and for guidance on how the PTO applies this exclusion in the context of its examination procedures, see Patentable Subject Matter, Mathematical Algorithms and Computer Programs, 1066 O.G. 5 (Sept. 6, 1989), and Note Interpreting In re Iwahashi, 1112 O.G. 16 (March 13, 1990).

Second, methods of doing business are excluded from patent protection. While no cases have directly applied this exclusion to deny patent protection for software-related inventions, the exclusion is relevant for questioning the patent eligibility of precesses that are modeled upon existing business processes but are implemented through a software-based system. See, e.g., Paine, Webber, Jackson & Curtis, Inc., v. Merrill Lynch, Pierce, Fenner & Smith 564 F. Supp. 1358, 218 U.S.P.Q. 212 (D. Del. 1983).

Finally, printed matter, per se, is not eligible for protection under the patent laws. This exclusion has relevance in the context of software code "written" onto non-paper media (e.g., magnetic or optical media capable of storing the software code). See, e.g., In re Miller, 164 U.S.P.Q. 439 (C.C.P.A. 1969); In re Jones, 153 U.S.P.Q. 77 (C.C.P.A. 1967).


The 1993 views of the PTO on exclusions from patent eligibility relevant to software related inventions was already under challenge by 1993. As will appear from materials found in later pages, all three of the exclusions listed here (algorithms, business methods, printed matter) came under serious attack by the middle of the 1990s. None retained much vitality by the end of the decade. By the end of the 1990s, attention of courts (under the leadership of the Federal Circuit) had largely shifted away from exclusions from patentability to issues of scope of claims, based on disclosure and prosecution history. Within the PTO, attention shifted to how much of a documentary showing the Examining Staff would have to make to justify its rejection of claims as obvious. Considerations of procedure displaced those of software policy. To the extent any policy issue remained, it was about how broad a patent could issue on a software-related invention rather than whether any patent would issue. After 2000, however, the tide began to change.

"Software Patent" Policy Issues
Excerpt from U.S. Cong./Off. Technol. Assessment, Finding a
Balance: Computer Software, Intellectual Property, and the
Challenge of Technological Change
, ch. 4 (1992)

There has been considerable debate about the granting of patents for software related inventions. Some believe that no inventions that use software should be patentable or that only software-related inventions that are traditional industrial processes should be statutory subject matter. Others believe that inventions that use software should not be treated differently from other types of inventions. In fact, some who believe that software-related inven tions should be patentable have argued that many of what are now deemed nonstatutory mathematical algorithms should be statutory subject matter.

Some of the concerns about the patenting of inventions that use software are similar to those expressed about the patent system in general or about the patent system's ability to accommodate any new technology. In some cases these questions have been brought into sharper focus in the context of software. For example, the appropriate length of the patent term has been a subject of discussion for many years; many believe that 17 years is especially inappropriate for a fast-moving technology such as software.

The fact that patent applications are kept secret until the patent issues makes it impossible to be certain that a product under development will not be accused of infringing a patent; this "land-mine" problem may be exacerbated by the longer pendency for computer-related inventions.

Structural Effects

However, two areas of concern are more directly related to the question of software patentability: the effect of patents on industry structure and innovation, and the quality of the patents that have been granted. First, it is argued that the widespread use of patents could change the structure of the software industry in a way that would actually reduce the rate of innovation. According to those who hold this view, patenting favors larger companies, not the small companies that have historically been the source of much innovation. The software industry has had a disproportionate number of smaller companies; in part, this industry structure was due to the fact that the limited use of patents and licenses kept barriers to entry modest. There is a concern that the widespread use of patents could reduce small-company- based innovation by raising barriers to entry, either as a result of the need to pay royalties or the added costs of searching and filing for patents. In addition, large companies could engage in portfolio trading while small companies without extensive patent portfolios would have their freedom to develop products restricted. The alternative view is that the economics of the software industry is not that different from the economics of other industries, and that patents are therefore equally appropriate for encouraging software development. Some argue that software development is becoming increasingly expensive, and patents may provide the incentive needed to invest or attract venture capital funding. In addition, it may be that patents in fact benefit small companies, by providing a means to protect their development effort against appropria tion by a larger company.

Patent Quality

A second set of concerns focuses on the quality of patents that have issued. Some consider that many patents have issued that not in fact represent significant advances. From the developer's perspective, this increases the probability that a program could be accused of infringing patents. The developer would then have to decide whether to engage in costly litigation in an attempt to invalidate the patent. The perceived problems with examination quality have primarily been the result of the long period of time during which it was uncertain whether software-related inventions were statutory subject matter. Few patents issued for software-related ventions, leading to gaps in PTO's database of prior art. Some believe that the problems with the database of prior art can be resolved given enough time. However, the burdens on the PTO of increasingly backlogged applications and external criticism may be exacerbated over the next several years. Computer-implemented processes will become more commonplace and important in a wide variety of industries and applications ranging from home entertainment to scientific research to financial services.

Evolving Nature of Problem

There may be many practical limitations on attempts to exclude "software" inventions from the patent system. First, many claims in computer-related invention patents issuing today cover both hardware and software implementations; if the software implementation were not an infringement, the value of a "hardware" invention could be appropriated. Some inventions that initially were "hardware inventions" are now being implemented in software, as faster processors have become available. Second, there are many inventions that use software but are not the type of invention that has been the subject of concern in the policy debate. There does not appear to be much concern about the patenting of traditional industrial processes that happen to use software as part of the apparatus or to perform a step in the process.


1. One policy concern has been whether possibly "duplicative" patent and copyright coverage of the same soft ware creates undue problems for others in the field. Do a patent and a copy right on the same piece of software re ally cover the same thing? Is there a real difference or is that a debater's point?

2. Do you agree with OTA's conclusion that there is not "much concern about the patenting of traditional in dustrial processes that happen to use software as part of the apparatus or to perform a step in the process"? Should there be? Is there any difficulty in distinguishing a software invention from a traditional industrial process that happens to use software as part of the apparatus or to perform a step in the process? Do you just know it when you see it?? See Jacobellis v. Ohio, 376 U.S. 184, 197 (1964). Or can you furnish an informative definition? Can you think of any innovations that were categorically infeasible before computer software means became able? (Consider, for example, issues of real time processing.) Is there a difference in principle between the improved rubber molding process of Diamond v. Diehr, ch. 8 A, and the business systems of In re Schrader, ch. 8 C, and tate Street Bank & Trust Co. v. Signature Financial Group, Inc., ch. 8 C?

Technology Background for
Software-Patent Cases (Tutorial)

Excerpt from Brief of United States in
Dann v. Johnston, 425 U.S. 219 (1976)

The issues in this case are (1) whether respondent's claimed invention concerning a new use of existing general-purpose digital computers constitutes patentable subject matter, and (2) whether that new use was unobvious to one skilled in the art of devising such uses. The questions are interrelated, for the determination of what constitutes patentable subject matter establishes a framework within which the question of obviousness may be assessed, and delineation of the assertedly non-obvious aspect of the claimed invention can focus more precisely the analysis of whether it involves patentable subject matter. Therefore we will begin by considering what it is that respondent claims he has invented that is sufficiently novel and unobvious to be entitled to a patent monopoly against all others who would use such computers in like fashion. Because respondent's claims are cast in not only the specialized language of patent applications but the esoteric terminology used to describe even a routine operation of a general-purpose digital computer, they may be more readily explained if we first describe such computers and programs briefly.

A digital computer, for present purposes is an electronic device that, pursuant to appropriate controls, can perform specified arithmetical and logical operations so as to process data stored in its "memory" or presented as part of the "input" to the computer, and to present results in a designated form of "output." The particular operations to be performed by a computer are governed by the state and configuration of its electronic circuitry and other apparatus. Such circuitry can be fully built into the computer through wires and other physical elements (i.e., as part, of the "hardware"), in which case, unless it is physically rewired, the computer will ordinarily serve only a specific purpose or application.

Alternatively, the computer, may be designed so that the state or configuration of its circuitry can readily be changed without rewiring or other visible physical changes. Such changes are accomplished by the use of different "programs" which through various means (e.g., punched cards, tapes, disks) transmit instructions and data to the computer, in a code or "language" that the computer has been designed or programmed to "understand," for conversion to electronic impulses.

Some programs, called "system software," are directed only to certain standard essential operations of the computer itself (e.g., translating, sorting) that are required to serve virtually any end use of the computer. Others, called "applications software" or "applications programs," are designed to make the computer perform specified data processing operations for particular users. It is the latter type of program that is involved in this case and is generally denoted by references to computer programs in common parlance.

A general-purpose digital computer is designed to operate under a variety of different programs to perform diverse data processing operations. Flexibility is its essence. As the Court observed in Gottschalk v. Benson, the end uses of such computers "vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents." But such tasks are simply different uses for a machine that is specifically designed to perform a wide variety of tasks involving the processing of complex or voluminous data, in some cases implementing different applications programs virtually simultaneously. Simply put, the difference between a general-purpose digital computer (with which we will be concerned hereafter), and a fixed-wire computer is like the difference between a player piano and a music box, respectively.

In considering claims to inventions involving the use of existing general-purpose digital computers, it is useful to focus on three successive modes of activity: (1) formulating the ultimate purpose to be served by a computer operation; (2) implementing that purpose or idea by determining what data should be stored in the computer's memory or be included in the input to the computer, and what steps the computer should be instructed to take in processing the data; and (3) translating those instructions into a special form and language that the computer can read. The term "program," while in a sense referring only to the product of the third phase, which may involve no more than a rather routine or mechanical operation, is also used generically to encompass the second phase as well.* In some cases, moreover, the implementation of the purpose to be served may require the use of other apparatus in conjunction with the computer.

  *     We do not suggest that every issue concerning the application of the existing patent laws to computer programs can and must be analyzed by reference to this tripartite framework, although we believe that it usefully characterizes the broad range of computer programming.

Theoretically, inventiveness could be claimed for any of these steps. Thus one might claim to have invented, singly or in combination: a new use for a known computer, a new set of instructions to a computer to accomplish a specified operation," a new language to instruct the com puter, or a new device (or combina tion of a computer with an existing device.

As we shall see, the alleged inventiveness or novel discovery supporting the respondent's claim to a patent resides only in the first, and most abstract, mode the general idea or purpose that the computer would be programmed to implement. This idea as such is what respondent asserts to be sufficiently novel and unobvious to be patentable.

More specifically, respondent's alleged "invention" consists of the idea of having banks program and use their existing computers, through conventional programming techniques, to perform for their customers simple bookkeeping services that the customers either perform for themselves, hire a bookkeeper to perform, or else forego. The service consists of preparing balance statement subtotals for credits and debits in categories designated by the customer, such as rent payments, fuel payments, dividends received, sales income and the like. As conceded by respondent, the "invention" is marketed to banks in the form of an appropriate computer program, which the banks can then use on their conventional general-purpose digital computers (e.g., the IBM 1400).

Although the respondent characterizes his invention as consisting of the "machine system" that results when a conventional digital computer is programmed to implement the idea, he does not claim to have invented a computer, nor does he claim that the instructions to the computer to implement the idea are themselves sufficiently inventive to be a patentable "Discovery" contemplated by the patent clause of the Constitution and by the Patent Code. Indeed, respondent's application acknowledges that a typical program would embody "known" and "standard techniques."

Neilson v. Harford
Exchequer of Pleas
151 Eng. Rep. 1266, 8 M. & W. 806, Web. Pat. Cases 295 (1841)

This was an action on the case for the infringement of a patent, dated 11th September, 1828, granted to the plaintiff James Beaumont Neilson for a term of fourteen years, the title of which was “An invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required.”

The defendants pleaded not guilty, and also several special pleas, of which the fourth only is material to this report. In that plea the defendants set out the specification of the invention enrolled by the plaintiff Neilson, as follows: “I, James Beaumont Neilson, do hereby declare, that the nature of my said invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required, and the manner in which the same is to be performed, is particularly described and ascertained as follows: that is to say:– A blast or current of air must be produced by bellows or other blowing apparatus, in the ordinary way, to which mode of producing the blast or current of air this patent is not intended to extend. The blast or current of air so produced is to be passed from the bellows or blowing apparatus into an air-vessel or receptacle, made sufficiently strong to endure the blast, and from that vessel or receptacle, by means of a tube, pipe, or aperture, into the fire, forge, or furnace. The vessel or receptacle must be air-tight, or nearly so, except the apertures for the admission and emission of the air; and at the commencement and during the continuance of the blast, it must be kept artificially heated to a considerable temperature. It is better that the temperature be kept to a red heat, or nearly so; but so high a temperature is not absolutely necessary to produce a beneficial effect. The air-vessel or receptacle may be conveniently made of iron, but as the effect does not depend upon the nature of the material, other metals or convenient materials may be used. The size of the air-vessel must depend upon the blast, and upon the heat necessary to be produced. For an ordinary smith’s fire or forge, an air-vessel or receptacle capable of containing 1200 cubic inches will be of proper dimensions; and for a cupola of the usual size for cast-iron founders, an air-vessel capable of containing 10,000 cubic inches will be of a proper size. …[Ed. Note: The receptacle is, in effect, a metal box, located under the word “air” at the lower right of the figure shown above. The metal box is heated in order to heat the air that travels through it from the right via the pipe to the cupola.]

The judgment of the Court was delivered by Baron Parke.

In the case of Neilson v. Harford, at the request of my Lord Abinger, I proceed to deliver his Lordship’s judgment, and that of the rest of the Court, on this question.

… Then we come to the question itself, which depends on the proper construction to be put on the specification. It was contended that of this construction the jury were to judge. We are clearly of a different opinion. The construction of all written instruments belongs to the Court alone, whose duty it is to construe all such instruments, as soon as the true meaning of the words in which they are couched, and the surrounding circumstances, if any, have been ascertained as facts by the jury: and it is the duty of the jury to take the construction from the Court, either absolutely, if there be no words to be construed as words of art, or phrases used in commerce, and no surrounding circumstances to be ascertained; or conditionally, when those words or circumstances are necessarily referred to them. Unless this were so, there would be no certainty in the law; for a misconstruction by the Court is the proper subject, by means of a bill of exceptions, of redress in a Court of Error; but a misconstruction by the jury cannot be set right at all effectually.

Then, taking the construction of this specification on ourselves, as we are bound to do, it becomes necessary to examine what the nature of the invention is which the plaintiff has disclosed by this instrument. It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of some of the Court much difficulty; but, after full consideration, we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this – the interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated, by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which before was of cold air, in a heated state to the furnace.

[The court concluded by affirming the judgment below.]


  1. The question in this case, as Baron Alderson posed it (Neilson, 151 Eng. Rep. at 1272, 8 M & W at 820, Web. Pat. Cases at 371), was “[W]here is the difference between claiming a principle, which is to be carried into effect any way you will, and claiming a mere principle?” What's the answer?

  2. The Neilson court simply assumes, and the parties do not challenge it, that a patent cannot be granted on a principle. Is that proposition self evident? Earlier, in Boulton v. Bull, 1 Wm. Carpmael Pat. Rep. 117 (Com. Pl. 1795), and Hornblower v. Boulton, id. 156 (K.B. 1799), the issue arose over James Watt's claim to an improved steam engine but was left unresolved. The Court of Common Pleas was unable to decide the issue by a majority vote in the case against Bull. The King's Bench held in 1799 in the case involving Hornblower that Watt claimed an engine, not a “philosophical principle.” It therefore ruled that it was unnecessary to determine “whether or not mere abstract principles are the subject of a patent.” Id. at 165 (judgment of (Laurence, J.). Apparently, Watt claimed to lessen the consumption of fuel by insulating the chamber in which the steam operated. Hornblower claimed that this was just a philosophical principle but the court ruled that Watt had described in his patent a machine or “a manufacture, which I understand to be something made by the hands of man”—an improved steam engine that used less fuel. Although the court did not find it necessary to decide whether a philosophical principle could be patented, because Watt’s invention did not fall into that category, several members of the court indicated in dicta that they did not conceive that the Statute of Monopolies, 21 Jac. I, c. 3, § 6, which authorized the grant of patents to those who brought “new manufactures” into the realm, was intended to apply to “a mere principle.” The verdict of infringement of Watt’s patent was unanimously affirmed.

Baron Alderson, during the Exchequer appeal proceeding in Neilson, remarked:

I have always thought that the real test was this; that in order to discover whether it is a good or a bad patent, you should consider that what you cannot take out a patent for must be considered to have been invented pro bono publico—that is to say, the principle must be considered as having had an anterior existence before the patent.

Web. Pat. Cases at 342 n.c. Does it matter fundamentally whether the patentee or an earlier worker in the field first discovered the principle? Was Einstein any more entitled to a patent on E = mc2 than, say, Homer Simpson?

  3. What is the priciple that Neilson's invention implemented? At one level of generality, it was that blowing hot air into a furnace made “better iron.” There was some confusion in the opinions about why a hot air blast made better iron than a cool air blast. The Neilson court and the Morse court both seemed to have thought it was because the hot air blast made the fuel burn better: see Neilson, 151 E.R. at 1273; Morse, 56 U.S. (15 How.) at 116 (“the discovery that hot air would promote the ignition of fuel better than cold”; “Undoubtedly the principle that hot air will promote the ignition of fuel better than cold was embodied in this machine.”). But the air blast is directed into the molten iron, not into the fuel, so that cannot be the case. It is also unclear from the opinions how the iron was “better.”

  The true answer would seem to be that keeping up the temperature of the molten iron (by injecting heated rather than cool air) promoted the rate of reaction inside the iron in the furnace, whereby oxygen made the carbon in the iron (undesirable when excessive, because it made the iron brittle) oxidize to carbon monoxide and carbon dioxide, while the resulting carbon monoxide helped reduce any remaining iron oxide to iron. The greater the temperature, the more kinetic energy the molecules have, the faster they move, and the more collisions occur per second between molecules. That speeds up the foregoing reactions, because reactions occur only when molecules collide, and it pushes the result toward the right sides of the equations 2 C + O2 → 2 CO and C + O2 → CO2 ↑, which provides “better iron.” This was beyond the scope of early 19th-century science. There is a more detailed discussion of the chemistry in Wikipedia: “Blast furnace”. It is also said that the hot air blast permitted use of less and cheaper fuel (coal).

  Do you think the courts’ confusion about the details of the invention affects the validity of the legal principle? Doubtful. It does show, however, that what the natural principle is (or is thought to be) is relative: it depends on time and place.

  4. Neilson is a landmark case. But its treatment of the issue is hardly definitive. The enduring rationale of Neilson is that the patent must be on an apparatus or machinery implementing the natural principle, rather than on the principle itself. The decision does not judge the difficulty or complexity of the implementing device. It does not consider whether the implementation is trivial, once one is in possession of the principle. It does not consider whether that makes any difference. At first blush, heating a receptacle or its equivalent to get the air hot seems the natural, perhaps the only sensible, way to heat the air.

What the scope of Neilson’s patent should be was an issue. What constituted a receptacle or resrvoir? Some infringers used a network of pipes, which they claimed worked better than Neilson’s receptacle, because it had greater surface area which facilitated better heat transfer. See Web. Pat. Cases at 304 (defendant’s argument at trial, describing defendant’s apparatus). Baron Alderson said that Neilson’s patent covered use of an “intermediate reservoir between the blast furnace and the bellows.” Therefore, “surely any body else may apply the same principle, provided he does not do it by a reservoir intermediately between the blast furnace and the bellows.” It then became a fact question as to what constituted a “reservoir”. It was for the jury to decide, Baron Alderson said, “whether or not a long spiral pipe is a reservoir,” for “if it be not a reservoir, or a colourable imitation of a reservoir, it is no infringement.” See Neilson, Web. Pat. Cases at 342. Neilson himself apparently thought (erroneously) that it made no difference what the shape of the receptacle was. His specification said that the shape and form of the receptacle was immaterial. See id. at 371.

It might seem, therefore, that Neilson disclosed an obvious implementation of the underlying principle and also did not understand very well how to implement it. (The accused infringers so argued.) Still, this is 170 or more years later. Perhaps we are in no position to judge that. But the question of triviality of implementations of principles came to the fore in the 20th century, as will appear in such later cases as Funk and Flook, in chapter 8A, and still later in the 21st century in Mayo and Alice, in chapter 8D.

Le Roy v. Tatham
United States Supreme Court
55 U.S. (14 How.) 156 (1852)

[The inventors had discovered the principle that hot, but congealed, lead under pressure would re-unite as an unbroken solid material, thereby permitting manufacture of a superior lead pipe. The apparatus to make lead pipe was old and obvious: the inventors, by making slight changes in the old machinery to provide sufficient heat and pressure to remelt the lead, in effect, invented a new use of an old machine (of dubious patentability at that time if claimed as a method). The specification stated that the inventors “do not claim any of the parts—the cylinder, core, die, or bridge, but that they claim the combination when used to form pipes of metal, under heat and pressure, in the way they have described.” The claim, because that was how claims were then typically written, claimed the old or obvious apparatus (as an apparatus) “when used to form pipes of metal under heat and pressure in the manner set forth or in any other manner substantially the same.”

The trial court charged the jury that “the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application by which an useful article of manufacture is produced, and wrought pipe made, as distinguished from cast pipe.” That is, the charge to the jury gave effect to the claim words “or in any other manner substantially the same.”

The defendants excepted to the charge. The jury returned a verdict for the plaintiffs for $11,394 damages and six cents costs. The defendants appealed.]

Mr. Justice McLean delivered the opinion of the Court. The patentees say of their pipe, “The essential difference in the character of this pipe, which distinguishes it, as well as that contemplated by all other heretofore known or attempted pipe, is that it is wrought under heat, by pressure and constriction, from set metal, and that it is not a casting formed in a mould.”

And they declare, “We do not claim as our invention and improvement, any of the parts of the above-described machinery independently of its arrangement and combination above set forth. What we do claim as our invention and desire to secure is the combination of the following parts above described, to-wit, the core and bridge or guide piece, with the cylinder, the piston, the chamber and the die, when used to form pipes of metal under heat and pressure in the manner set forth or in any other manner substantially the same.”

It is admitted that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery, a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself under the patent laws. The same may be said of electricity and of any other power in nature, which is alike open to all and may be applied to useful purposes by the use of machinery.

A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.

In the case before us, the court instructed the jury that the invention did not consist “in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe.”

A patent for [seamless] leaden pipes would not be good, as it would be for an effect, and would consequently prohibit all other persons from using the same article, however manufactured. Leaden pipes are the same, the metal being in no respect different. Any difference in form and strength must arise from the mode of manufacturing the pipes. The new property in the metal claimed to have been discovered by the patentees belongs to the process of manufacture, and not to the thing made.

But we must look to the claim of the invention stated in their application by the patentees. They say: “We do not claim as our invention and improvement any of the parts of the above described machinery, independently of their arrangement and combination above set forth. . . . What we claim as our invention and desire to secure by letters patent is the combination of the following parts above described, to-wit, the core and bridge or guide piece, the chamber, and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same.”

The patentees have founded their claim on this specification, and they can neither modify nor abandon it in whole or in part. The combination of the machinery is claimed through which the new property of lead was developed as a part of the process in the structure of the pipes. But the jury were instructed “"that the originality of the invention did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application.”

The patentees claimed the combination of the machinery as their invention in part, and no such claim can be sustained without establishing its novelty—not as to the parts of which it is composed, but as to the combination.

[As a circuit judge], Mr. Justice Story said: “He [the patentee] says that the same apparatus stated in this last claim has been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature. If this be so, then the invention is not new, but, at most, is an old invention or apparatus or machinery applied to a new purpose. Now I take it to be clear that a machine or apparatus or other mechanical contrivance, in order to give the party a claim to a patent therefor, must in itself be substantially new. If it is old and well known, and applied only to a new purpose, that does not make it patentable.”

We think there was error in the [trial court’s] instruction, and that on that ground, the judgment must be reversed.

Mr. Justice Nelson dissented, with whom Justices Wayne and Grier concurred.

The patentees in this case discovered by experiment that lead, when recently set and solid but still under heat and extreme pressure in a close vessel, would reunite after a separation of its parts and “heal,” in the language of the patentees, as completely as though it had not been divided.

Upon the discovery of this property of lead, which had never before been known, but, on the contrary, had been supposed and believed, by all men of science skilled in metals, to be impossible, the patentees made an alteration in the known apparatus founded upon this new property discovered in the metal, and succeeded completely in making wrought pipe out of solid lead by means of the hydraulic pressure. The product was so much superior in quality to that made according to the old mode that it immediately wholly superseded it in the market. The pipe was also made much cheaper.

The patentees state that they do not intend to confine themselves to the arrangement of the apparatus thus particularly specified, and point out several other modes by which the same result may be produced, all of which variations would readily suggest themselves, as they observe, to any practical engineer without departing from the substantial originality of the invention, the remarkable feature of which, they say, is that lead, when in a set state, being yet under heat, can be made by extreme pressure to reunite perfectly around a core after separation, and thus be formed into strong pipes or tubes. Pipes thus made are found to possess great solidity and unusual strength, and a fine uniformity such as had never before been attained by any other mode. The essential difference in its character, and which distinguishes it from all other theretofore known, they add, is that it is wrought under heat, by pressure and constriction, from set or solid metal.

Now on looking into the specification, we see that the leading feature of the invention consists in the discovery of a new property in the article of lead and in the employment and adaptation of it, by means of the old machinery described, to the production of a new article, wrought pipe, never before successfully made. Without the discovery of this new property in the metal, the machinery or apparatus would be useless, and not the subject of a patent. It is in connection with this property and the embodiment and adaptation of it to practical use that the machinery is described and the arrangement claimed. The discovery of this new element or property led naturally to the apparatus by which a new and most useful result is produced. The apparatus was but incidental and subsidiary to the new and leading idea of the invention. And hence the patentees set forth as the leading feature of it, the discovery that lead in a solid state, but under heat and extreme pressure in a close vessel, will reunite after separation of its parts as completely as though it had never been separated. It required very little ingenuity, after the experiments in a close vessel, by which this new property of the metal was first developed, to construct the necessary machinery for the formation of the pipe. The apparatus essential to develop this property would at once suggest the material parts, especially in the state of the art at the time. Any skillful mechanic, with Burr's machine before him, would readily construct the requisite machinery.

The patentees therefore, after describing their discovery of this property of lead and the apparatus by means of which they apply the metal to the manufacture of pipe, claim the combination of the machinery only when used to form pipes under heat and pressure in the manner set forth or in any other manner substantially the same. They do not claim it as new separately, or when used for any other purpose, or in any other way, but claim it only when applied for the purpose and in the way pointed out in the specification. The combination, as machinery, may be old; may have been long used; of itself, what no one could claim as his invention, and may not be the subject of a patent. What is claimed is that it never had been before applied or used in the way and for the purpose they have used and applied it -- namely in the embodiment and adaptation of a newly discovered property in lead by means of which they are enabled to produce a new manufacture—seamless, wrought pipe.

The patentees have certainly been unfortunate in the language of the specification if, upon a fair and liberal interpretation, they have claimed only the simple apparatus employed; when they have not only set forth the discovery of this property in the metal, as the great feature in their invention, but, as is manifest, without it the apparatus would have been useless. Strike out this new property from their description and from their claim and nothing valuable is left. All the rest would be worthless. This lies at the foundation upon which the great merit of the invention rests, and without a knowledge of which the new manufacture could not have been produced, and, for aught we know, the world would have been deprived of it down to this day.

The combination of these parts is claimed only when used to form pipes of lead under heat and pressure in the manner set forth—that is, when used for the embodiment and adaptation of this new property in the metal for making wrought pipe out of a solid mass of lead. This guarded limitation of the use excludes the idea of a claim to the combination for any other, and ties it down to the instance when the use incorporates within it the new idea or element which gives to it its value, and by means of which the new manufacture is produced. How then can it be consistently held that here is a simple claim to the machinery, and nothing more, when a reasonable interpretation of the words not only necessarily excludes any such claim, but in express terms sets forth a different one—one not only different in the conception of the invention, but different in the practical working of the apparatus, to accomplish the purpose intended?

I conclude therefore that the claim in this case is not simply for the apparatus employed by the patentees, but for the embodiment or employment of the newly discovered property in the metal and the practical adaption of it by these means to the production of a new result—namely, the manufacture of wrought pipe out of solid lead.

Then is this the proper subject matter of a patent?

[In my view, the proper principle is this:] Where a person discovers a principle or property of nature, or where he conceives of a new application of a well known principle or property of nature and also of some mode of carrying it out into practice so as to produce or attain a new and useful effect or result, he is entitled to protection against all other modes of carrying the same principle or property into practice for obtaining the same effect or result.

I think that a person having discovered the application for the first time of a well known law of nature or well known property of matter by means of which a new result in the arts or in manufactures is produced and has pointed out a mode by which it is produced is entitled to a patent, and if he has not tied himself down in the specification to the particular mode described, he is entitled to be protected against all modes by which the same result is produced by an application of the same law of nature or property of matter. And a fortiori if he has discovered the law of nature or property of matter and applied it is he entitled to the patent and aforesaid protection.

And why should not this be the law? The original conception -- the novel idea in the one case, is the new application of the principle or property of matter, and the new product in the arts or manufactures -- in the other, in the discovery of the principle or property and application, with like result. The mode or means are but incidental, and flowing naturally from the original conception, and hence of inconsiderable merit. But, it is said, this is patenting a principle or element of nature. And what if the principle is incorporated in the invention and the inventor protected in the enjoyment for the fourteen years? He is protected only in the enjoyment of the application for the special purpose and object to which it has been newly applied by his genius and skill. For every other purpose and end, the principle is free for all mankind to use. And where it has been discovered as well as applied to this one purpose, and open to the world as to every other, the ground of complaint is certainly not very obvious. Undoubtedly, within the range of the purpose and object for which the principle has been for the first time applied, piracies are interfered with during the fourteen years. But anybody may take it up and give to it any other application to the enlargement of the arts and of manufactures without restriction. He is only debarred from the use of the new application for the limited time which the genius of others has already invented and put into successful practice. The protection does not go beyond the thing which for the first time has been discovered and brought into practical use, and is no broader than that extended to every other discoverer or inventor of a new art or manufacture. I own I am incapable of comprehending the detriment to the improvements in the country that may flow from this sort of protection to inventors.

To hold in the case of inventions of this character that the novelty must consist of the mode or means of the new application producing the new result would be holding against the facts of the case, as no one can but see that the original conception reaches far beyond these. It would be mistaking the skill of the mechanic for the genius of the inventor.

Upon this doctrine some of the most brilliant and useful inventions of the day by men justly regarded as public benefactors, and whose names reflect honor upon their country—the successful application of steam power to the propulsion of vessels and railroad cars, the application of the electric current for the instant communication of intelligence from one extremity of the country to the other. It would be found on consulting the system of laws established for their encouragement and protection that the world had altogether mistaken the merit of their discovery; that instead of the originality and brilliancy of the conception that had been unwittingly attributed to them, the whole of it consisted of some simple mechanical contrivances which a mechanician of ordinary skill could readily have devised. Even Franklin, if he had turned the lightning to account, in order to protect himself from piracies must have patented the kite, and the thread, and the key, as his great original conception, which gave him a name throughout Europe as well as at home for bringing down this element from the heavens and subjecting it to the service of man. And if these simple contrivances, taken together and disconnected from the control and use of the element by which the new application and new and useful result may have been produced, happen to be old and well known, his patent would be void; or if some follower in the tract of genius, with just intellect enough to make a different mechanical device or contrivance for the same control and application of the element and produce the same result, he would, under this view of the patent law, entitle himself to the full enjoyment of the fruits of Franklin's discovery.

For these reasons, I am constrained to differ with the judgment a majority of my brethren have arrived at, and am in favor of affirming that of the court below.


1. In the United States, one cannot successfully claim an old machine or other product as applied to a new use. It has been possible, however, at least since the passage of the 1952 patent act, to claim as a method or process a new use of an old machine or other product. But how broadly may one so claim?

What if the claim in this case were: A method for making seamless lead pipe comprising subjecting recently set and solid seamed pipe to sufficient heat and extreme pressure in a close vessel as to reunite the seamed pipe into an integral and seamless pipe? Must there be a further limitation, such as: by using the specific apparatus hereinbefore described? What about something in between? (Assume the specification states the required pressure and temperature.)

2. In Corning v. Burden, 15 How. 252, 56 U. S. (15 How.) 252 (1853), the Court said, “One may discover a new and useful improvement in the process of tanning, dyeing, etc., irrespective of any particular form of machinery or mechanical device.” Id. at 267-68. The examples given were the “arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores.” Id. at 267. Does it matter that those are instances in which the use of chemical substances or physical acts, such as temperature or pressure control, changes articles or materials from one form into another?

3. Cochrane v. Deener, 94 U. S. 780 (1876), involved a process for manufacturing flour so as to improve its quality. The process first separated the superfine flour and then removed impurities from the middlings by blasts of air, reground the middlings, and then combined the product with the superfine. Id. at 94 U. S. 785. The claim was not limited to any special arrangement of machinery. Id. The Court said, “That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar, or a mill. Either may be pointed out; but if the patent is not confined to that particular tool or machine, the use of the others would be an infringement, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.” Id. at 787-88. Does that mean that transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines?

4. What do you think of the legal rule for which Justice Nelson contends in his dissent:

I think that a person having discovered the application for the first time of a well known law of nature or well known property of matter by means of which a new result in the arts or in manufactures is produced and has pointed out a mode by which it is produced is entitled to a patent and . . . he is entitled to be protected against all modes by which the same result is produced by an application of the same law of nature or property of matter.

Consider the rule for which Justice Nelson contends, as applied to Franklin's “invention.” (as Justice Nelson imagines it) of electricity. How would you determine whether someone infringed Franklin’s hypothetical patent on electricity? Would the inventor of the electric chair be an infringer? Does television infringe?

O'Reilly v. Morse
United States Supreme Court
56 U.S. (15 How.) 62 (1853)

Mr. Chief Justice Taney delivered the opinion of the Court.

In proceeding to pronounce judgment in this case, the court is sensible, not only of its importance, but of the difficulties in some of the questions which it presents for decision. The case was argued at the last term, and continued over by the court for the purpose of giving it a more deliberate examination. And since the continuance, we have received from the counsel on both sides printed arguments, in which all of the questions raised on the trial have been fully and elaborately discussed.

The main dispute between the parties is upon the validity of this patent; and the decision upon it will dispose of the chief points in controversy in the other.

It is obvious that, for some years before Professor Morse made his invention, scientific men in different parts of Europe were earnestly engaged in the same pursuit. Electro-magnetism itself was a recent discovery, and opened to them a new and unexplored field for their labors, and minds of a high order were engaged in developing its power and the purposes to which it might be applied.

Professor Henry, of the Smithsonian Institute, states in his testimony that, prior to the winter of 1819-20, an electro-magnetic telegraph that is to say, a telegraph operating by the combined influence of electricity and magnetism, was not possible; that the scientific principles on which it is founded were until then unknown; and that the first fact of electro-magnetism was discovered by Oersted, of Copenhagen, in that winter, and was widely published, and the account everywhere received with interest.

It is unnecessary, however, to give in detail the discoveries enumerated by him either his own or those of others. But it appears from his testimony that very soon after the discovery made by Oersted, it was believed by men of science that this newly discovered power might be used to communicate intelligence to distant places. And before the year 1823, Ampere of Paris, one of the most successful cultivators of physical science, proposed to the French Academy a plan for that purpose. But his project was never reduced to practice. And the discovery made by Barlow, of the Royal Military Academy of Woolwich, England, in 1825, that the galvanic current greatly diminished in power as the distance increased, put at rest, for a time, all attempts to construct an electro-magnetic telegraph. Subsequent discoveries, however, revived the hope; and in the year 1832, when Professor Morse appears to have devoted himself to the subject, the conviction was general among men of science everywhere that the object could, and sooner or later would be, accomplished.

The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect, after a certain distance had been traversed. But, encouraged by the discoveries which were made from time to time, and strong in the belief that an electro-magnetic telegraph was practicable, many eminent and scientific men in Europe, as well as in this country, became deeply engaged in endeavoring to surmount what appeared to be the chief obstacle to its success.

Early in the spring of 1837, Morse had invented his plan for combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electro-magnetism in long circuits, although it was not disclosed to the witness until afterwards; and that there is reasonable ground for believing that he had so far completed his invention, that the whole process, combination, powers, and machinery, were arranged in his mind, and that the delay in bringing it out arose from his want of means. For it required the highest order of mechanical skill to execute and adjust the nice and delicate work necessary to put the telegraph into operation, and the slightest error or defect would have been fatal to its success.

Regarding Professor Morse as the first and original inventor of the Telegraph, we come to the objections which have been made to the validity of his patent. We perceive no well-founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims. The difficulty arises on the eighth. It is in the following words:

Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing in telligible characters, signs, or letters at a distance.

If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.

No one, we suppose will maintain that Fulton could have taken out a patent for his invention of propelling vessels by steam, describing the process and machinery he used, and claimed under it the exclusive right to use the motive power of steam, however developed, for the purpose of propelling vessels. It can hardly be supposed that under such a pat ent he could have prevented the use of the improved machinery which science has since introduced; although the motive power is steam, and the result is the propulsion of vessels. Neither could the man who first discovered that steam might, by a proper arrangement of machinery, be used as a motive power to grind corn or spin cotton, claim the right to the exclusive use of steam as a motive power for the purpose of producing such effects.

Again, the use of steam as a motive power in printing-presses is comparatively a modern discovery. Was the first inventor of a machine or process of this kind entitled to a patent, giving him the exclusive right to use steam as a motive power, however developed, for the purpose of marking or printing intelligible characters? Could he have prevented the use of any other press subsequently invented where steam was used? Yet so far as patentable rights are concerned both improvements must stand on the same principles. Both use a known motive power to print intelligible marks or letters; and it can make no difference in their legal rights under the patent laws, whether the printing is done near at hand or at a distance. Both depend for success not merely upon the motive power, but upon the machinery with which it is combined. And it has never, we believe, been supposed by any one, that the first inventor of a steam printing-press, was entitled to the exclusive use of steam, as a motive power, however developed, for marking or printing intelligible characters.

Many cases have been referred to in the argument which have been decided upon this subject in the English and American courts. We shall speak of those only which seem to be considered as leading ones. And those most relied on, and pressed upon the court in behalf of the patentee, are the cases which arose in England upon Neilson's patent for the introduction of heated air between the blowing apparatus and the furnace in the manufacture of iron. It was elaborately argued, and appears to have been carefully considered by the court. The Neilson case was this:

Neilson, in his specification, described his invention as one for the improved application of air to produce heat in fires, forges, and furnaces where a blowing apparatus is required. And it was to be applied as follows: the blast or current of air produced by the blowing apparatus was to be passed from it into an air vessel or receptacle made sufficiently strong to endure the blast, and through or from that vessel or receptacle by means of a tube, pipe, or aperture into the fire, the receptacle be kept artificially heated to a considerable temperature by heat externally applied. He then described in rather general terms the manner in which the receptacle might be constructed and heated and the air conducted through it to the fire, stating that the form of the receptacle was not material nor the manner of applying heat to it. In the action above-mentioned for the infringement of this patent, the defendant, among other defenses, insisted that a patent for throwing hot air into the furnace instead of cold was a patent for a principle, and that a principle was not patentable.

Baron Parke, who delivered the opinion of the court, said: "It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of the court much difficulty, but after full consideration we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces, and his invention then consists in this: by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before cold air, in a heated state to the furnace."

It seems that the court at first doubted whether it was a patent for anything more than the discovery that hot air would promote the ignition of fuel better than cold. And if this had been the construction, the court, it appears, would have held his patent to be void because the discovery of a principle in natural philosophy or physical science is not patentable.

But after much consideration it was finally decided that this principle must be regarded as well known, and that the plaintiff had invented a mechanical mode of applying it to furnaces, and that his invention consisted in interposing a heated receptacle between the blower and the furnace, and by this means heating the air after it left the blower and before it was thrown into the fire. Whoever, therefore, used this method of throwing hot air into the furnace used the process he had invented, and thereby infringed his patent, although the form of the receptacle or the mechanical arrangements for heating it might be different from those described by the patentee. For whatever form was adopted for the receptacle or whatever mechanical arrangements were made for heating it, the effect would be produced in a greater or less degree if the heated receptacle was placed between the blower and the furnace and the current of air passed through it.

Undoubtedly the principle that hot air will promote the ignition of fuel better than cold was embodied in this machine. But the patent was not supported because this principle was embodied in it. He would have been equally entitled to a patent if he had invented an improvement in the mechanical arrangements of the blowing apparatus or in the furnace while a cold current of air was still used. But his patent was supported because he had invented a mechanical apparatus by which a current of hot air, instead of cold, could be thrown in. And this new method was protected by his patent. The interposition of a heated receptacle in any form was the novelty he invented.

We do not perceive how the claim in the case before us can derive any countenance from the Neilson decision. If the Court of Exchequer had said that Neilson's patent was for the discovery that hot air would promote ignition better than cold, and that he had an exclusive right to use it for that purpose, there might perhaps have been some reason to rely upon it. But the court emphatically denied this right to such a patent. And his claim, as the patent was construed and supported by the court, is altogether unlike that of the patentee before us.

For Neilson discovered that by interposing a heated receptacle between the blower and the furnace and conducting the current of air through it, the heat in the furnace was increased. And this effect was always produced, whatever might be the form of the receptacle or the mechanical contrivances for heating it or for passing the current of air through it and into the furnace.

Original Morse Relay
But Professor Morse has not discovered that the electric or galvanic current will always print at a distance, no matter what may be the form of the machinery or mechanical contrivances through which it passes. You may use electro-magnetism as a motive power, and yet not produce the described effect, that is, print at a distance intelligible marks or signs. To produce that effect, it must be combined with, and passed through, and operate upon, certain complicated and delicate machinery, adjusted and arranged upon philosophical principles, and prepared by the highest mechanical skill. And it is the high praise of Professor Morse, that he has been able, by a new combination of known powers, of which electro-magnetism is one, to discover a method by which intelligible marks or signs may be printed at a distance. And for the method or process thus discovered, he is entitled to a patent. But he has not discovered that the electro-magnetic current, used as motive power, in any other method, and with any other combination, will do as well.

The provisions of the acts of Congress in relation to patents may be summed up in a few words: Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery act ing altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.

Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed.

Mr. Justice Wayne, Mr. Justice Nelson, and Mr. Justice Grier, dissent from the judgment of the court. Mr. Justice Grier.

I entirely concur with the majority of the court that the appellee and complainant below, Samuel F. B. Morse, is the true and first inventor of the Recording Telegraph, and the first who has successfully applied the agent or element of nature, called electro-magnetism, to print ing and recording intelligible characters at a distance; and that his patent of 1840, finally reissued in 1848, and his patent for his improvements as reissued in the same year, are good and valid; and that the appellants have infringed the rights secured to the patentee by both his patents. But, as I do not concur in the views of the majority of the court, in regard to two great points of the case, I shall proceed to express my own....

The other point, in which I cannot concur with the opinion of the majority, arises in the construction of the eighth claim of complainant's first patent, as finally amended. The first claim, as explanatory of all that follow, should be read in connection with the eighth. They are as follows:

1st. Having thus fully described my invention, I wish it to be understood, that I do not claim the use of the galvanic current or currents of electricity, for the purpose of telegraphic communications generally; but what I specially claim as my invention and improvement, is making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner for the purpose of telegraphic communication at any distances. The only ways in which the galvanic current had been proposed to be used prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and the bubbles and the deflections of the needles thus produced, were the subjects of inspection, and had no power or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnetism.

There are various known modes of producing motions by electro-magnetism, but none of these had been applied prior to my invention and improvement to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement.

8th. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.

The objection to this claim is that it is too broad, because the inventor does not confine himself to specific machinery or parts of machinery, as described in his patent, but claims that the essence of his invention consists in the application of electro-magnetism as a motive power, however developed, for printing charac ters at a distance. This being a new application of that element or power, of which the patentee claims to be the first inventor or discoverer.

In order to test the value of this objection, as applied to the present case, and escape any confusion of ideas too often arising from the use of ill-defined terms and propositions, let us examine, 1st. What may be patented; or what forms a proper subject of protection, under the Constitution and acts of Congress, relative to this subject.

2d. What is the nature of the invention now under consideration? Is it a mere machine, and subject to the rules which affect a combination of mechanical devices to effect a particular purpose.

3d. Is the claim true, in fact? And if true, how can it be too broad, in any legal sense of the term, as heretofore used, either in the acts of Congress, or in judicial decisions?

1st. The Constitution of the United States declares that "Congress shall have the power to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries."

The act of Congress of 1836, confers this exclusive right for a limited time, on "any person who has discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements on any art, machine, manufacture, or composition of matter, not known or used by others, before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use," &c.

A new and useful art or a new and useful improvement on any known art is as much entitled to the protection of the law as a machine or manufacture. The English patent acts are confined to "manufactures" in terms; but the courts have construed them to cover and protect arts as well as machines; yet without using the term art. Here we are not required to make any latitudinous construction of our statute for the sake of equity or policy; and surely we have no right, even if we had the disposition, to curtail or narrow its liberal policy by astute or fanciful construction.

It is not easy to give a precise definition of what is meant by the term "art," as used in the acts of Congress some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, are stated with clearness and accuracy by Mr. Curtis, in his Treatise on Patents. "The term art, applies," says he, "to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect, or manufacture."

A machine, though it may be composed of many parts, instruments, or devices combined together, still conveys the idea of unity. It may be said to be invented, but the term "discovery" could not well be predicated of it. An art may employ many different machines, devices, processes, and manipulations, to produce some useful result. In a previously known art a man may discover some new process, or new application of a known principle, element, or power of nature, to the advancement of the art, and will be entitled to a patent for the same, as "an improvement in the art," or he may invent a machine to perform a given function, and then he will be entitled to a patent only for his machine.

That improvements in the arts, which consist in the new application of some known element, power, or physical law, and not in any particular machine or combination of machinery, have been frequently the subject of patents both in England and in this country, the cases in our books most amply demonstrate. The great art of printing, which has changed the face of human society and civilization, consisted in nothing but a new application of principles known to the world for thousands of years. No one could say it consisted in the type or the press, or in any other machine or device used in performing some particular function, more than in the hands which picked the types or worked the press. Yet if the inventor of printing had, under this narrow construction of our patent law, claimed his art as something distinct from his machinery, the doctrine now advanced, would have declared it unpatentable to its full extent as an art, and that the inventor could be protected in nothing but his first rough types and ill-contrived press.

He who first discovers that an element or law of nature can be made operative for the production of some valuable result, some new art, or the improvement of some known art; who has devised the machinery or process to make it operative, and introduced it in a practical form to the knowledge of mankind, is a discoverer and inventor of the highest class. The discovery of a new application of a known element or agent may require more labor, expense, persevering industry, and ingenuity than the inventor of any machine. Sometimes, it is true, it may be the result of a happy thought or conception, without the labor of an experiment, as in the case of the improvement in the art of casting chilled rollers, already alluded to. In many cases, it is the result of numerous experiments; not the consequence of any reasoning a priori, but wholly empirical; as the discovery that a certain degree of heat, when applied to the usual processes for curing India rubber, produced a substance with new and valuable qualities.

The mere discovery of a new element, or law, or principle of nature, without any valuable application of it to the arts, is not the subject of a patent. But he who takes this new element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of man; who applies it to the perfecting of a new and useful art, or to the improvement of one already known, is the benefactor to whom the patent law tenders its protection. The devices and machines used in the exercise of it may or may not be new; yet, by the doctrine against which I contend, he cannot patent then, because they were known and used before. Or, if he can, it is only in their new application and combination in perfecting the new art. In order words, he may patent the new application of the mechanical devices, but not the new application of the operative elements which is the essential agent in the invention. He may patent his combination of the machinery, but not his art.

When a new and hitherto unknown product or result, beneficial to mankind, is effected by a new application of any element of nature, and by means of machines and devices, whether new or old, it cannot be denied that such invention or discovery is entitled to the denomination of a "new and useful art." The statute gives the inventor of an art a monopoly in the exercise of it as fully as it does to the inventor of a mere machine. And any person who exercise such new art without the license of the inventor is an infringer of his patent, and of the franchise granted to him by the law as a reward for his labor and ingenuity in perfecting it. A construction of the law which protects such an inventor, in nothing but the new invented machines or parts of machinery used in the exercise of his art, and refuses it to the exercise of the art itself, annuls the patent law. If the law gives a franchise or monopoly to the inventor of an art as fully as to the inventor of a machine, why shall its protection not be coextensive with the invention in one case as well as in the other? To look at an art as nothing but a combination of machinery, and give it protection only as such, against the use of the same or similar devices or mechanical equivalents, is to refuse it protection as an art. It ignores the distinction between an art and a machine; it overlooks the clear letter and spirit of the statute; and leads to inextricable difficulties. It is viewing a statute or a monument through a microscope.

The reason given for thus confining the franchise of the inventor of an art to his machines and parts of machinery is, that it would retard the progress of improvement, if those who can devise better machines or devices, differing in mechanical principle from those of the first inventor of the art, or, in other words, who can devise an improvement in it, should not be allowed to pirate it.

To say that a patentee, who claims the art of writing at a distance by means of electro-magnetism, necessarily claims all future improvements in the art, is to misconstrue it, or draws a consequence from it not fairly to be inferred from its language. An improvement in a known art is as much the subject of a patent as the art itself; so, also, is an improvement on a known machine. Yet, if the original machine be patented, the patentee of an improvement will not have a right to use the original. This doctrine has not been found to retard the progress of invention in the case of machines; and I can see no reason why a contrary one should be applied to an art.

The claim of the patentee is, that he may be protected in the exercise of his art as against persons who may improve or change some of the processes or machines necessary in its exercise. The court, by deciding that this claim is too broad, virtually decides that such an inventor of an improvement may pirate the art he improves, because it is contrary to public policy to restrain the progress of invention. Or, in other words, it may be said that it is the policy of the courts to refuse that protection to an art which it affords to a machine, which it is the policy of the Constitution and the laws to grant.

2d. Let us now consider what is the nature of the invention now under consideration.

It is not a composition of matter, or a manufacture, or a machine. It is the application of a known element or power of nature, to a new and useful purpose by means of various processes, instruments and devices, and if patentable at all, it must come within the category of "a new and useful art." It is as much entitled to this denomination as the original art of printing itself. The name given to it in the patent is generally the act of the commissioner, and in this, as in many other cases, a wrong one. The true nature of the invention must be sought in the specification.

The word telegraph is derived from the Greek, and signifies "to write afar off or at a distance." It has heretofore been applied to various contrivances or devices, to communicate intelligence by means of signals or semaphores, which speak to the eye for a moment. But in its primary and literal signification of writing, printing, or recording at a distance, it never was invented, perfected, or put into practical operation till it was done by Morse. He preceded Steinheil, Cook, Wheatstone, and Davy in the successful application of this mysterious power or ele ment of electro-magnetism to this purpose; and his invention has entirely superseded their inefficient contrivances. It is not only "a new and useful art," if that term means any thing, but a most wonderful and astonishing invention, requiring ten fold more ingenuity and patient ex periment to perfect it than the art of printing with types and press, as originally invented.

3d. Is it not true, as set forth in this eighth claim of the specification, that the patentee was the first inventor or discoverer of the use or application of electro-magnetism to print and record intelligible charac ters or letters? It is the very ground on which the court agree in confirming his patent. Now the patent law requires an inventor, as a condition precedent to obtaining a patent, to deliver a written description of his invention or discovery, and to particularly specify what he claims to be his own invention or discovery. If he has truly stated the principle, nature and extent of his art or invention, how can the court say it is too broad, and impugn the validity of his patent for doing what the law requires as a condition for obtaining it? And if it is only in case of a machine that the law requires the inventor to specify what he claims as his own invention and discovery, and to distinguish what is new from what is old, then this eighth claim is superfluous and cannot affect the validity of his patent, provided his art is new and useful, and the machines and devices claimed separately, are of his own invention. If it be in the use of the words "however developed" that the claim is to be adjudged too broad, then it follows that a person using any other process for the purpose of developing the agent or element of electro-magnetism, than the common one now in use, and described in the patent, may pirate the whole art patented.

But if it be adjudged that the claim is too broad, because the inventor claims the application of this element to his new art, then his patent is to be invalidated for claiming his whole invention, and nothing more. If the result of this application be a new and useful art, and if the essence of his invention consists in compelling this hitherto useless element to record letters and words, at any distance and in many places at the same moment, how can it be said that the claim is for a principle or an abstraction? What is meant by a claim being too broad? The patent law and judicial decisions may be searched in vain for a provision or decision that a patent may be impugned for claiming no more than the patentee invented or discovered. It is only when he claims something before known and used, some thing as new which is not new, either by mistake or intentionally, that his patent is affected.

Assuming it to be true, then, for the purpose of the argument, that the new application of the power of electro-magnetism to the art of telegraphing or printing characters at a distance, is not the subject of a patent, because it is patenting a principle; yet as it is also true, that Morse was the first who made this application successfully, as set forth in this eighth claim, I am unable to comprehend how, in the words of the statute, we can adjudge "that he has failed to sustain his action, on the ground that his specification or claim embraces more than that of which he was the first inventor."


1. The importance of O'Reilly v. Morse, the Telegraph Patent Case, to the patent law concerning computer software related inventions cannot be overstated. It is to patents as Baker v. Selden is to copyrights. Why do you suppose that Baker and Morse are so important?

2. The problem that would-be telegraphers faced in the early 19th Century is explained by the Court: “The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect, after a certain distance had been traversed.” To send a signal from Baltimore to Washington would require thousands of volts and high currents – not feasible at a time when managing to make a pickled frog’s legs twitch was a major achievement of the elctro-galvanic force.
Morse Circuit Dgm.

The Problem:   Voltage vs. Distance

Morse’s “plan for combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electromagnetism in long circuits” is illustrated in the accompanying figure at the right. Consider it with the figure at the left, illustrating decrease in signal voltage (dark curve) and noise (red) graphed against distance. Morse inserted the relays (or “repeaters” as the opinion terms them) at intervals sufficiently short (say, every 20 miles) that the signal was restored regularly to substantially its initial level before the noise could swamp it out.

The Problem Solved:   Voltage vs. Distance

Professor Gayle, a friend of Morse and a witness at trial in this case, testified that Morse explained the principle of the repeater circuit to him early in 1836. At the time, both Morse and Gayle were professors at the University of the City of New York (now NYU), and Morse demonstrated his apparatus to Gayle there. Morse had recognized that

the magnetism to be obtained from the electric current would diminish in proportion as the circuit was lengthened, so as to be insufficient for any practical purpose at great distances, and to remove that probable obstacle to his success, he conceived the idea of combining two or more circuits together, each with an independent battery, making use of the magnetism of the first to close and break the second; that of the second to close and break the third, and so on.

56 U.S. at 72. Professor Gayle went on to describe Morse’s “confidence of success in propagating magnetic power through any distance of electric conductors which circumstances might render desirable.” Morse told Gayle:

Suppose . . . that in experimenting on twenty miles of wire, we should find that the power of magnetism is so feeble that it will but move a lever with certainty a hair’s breadth, that would be insufficient, it may be, to write or to print, yet it would be sufficient to close and break another, or a second circuit 20 miles further, and this second circuit could be made in the same manner, to close and break a third circuit, and so on around the globe.

56 U.S. at 73. Professor Gayle then described a circuit like that shown in the accompanying figure above at the right. Id.

The figure illustrates the great question, "What did Morse invent?" Did he invent the depicted apparatus and no more? Did he invent the more generic and abstract formulation of claim 8 — the use of electromagnetism, however developed, for marking intelligible characters at any distance? How does a court properly delimit the scope of an inventor's patent, short of the frontiers of the prior art? This is a recurrent question in patent law, particularly in respect of algorithms and similar abstractions. (For example, in a later section of these materials — the In re Alappat decision — the en banc Federal Circuit divides over whether Alappat, who disclosed a procedure for smoothing out the appearance of jagged lines on an oscilloscope display, should receive a patent grant extending to the use of the procedure in laser printers or other perhaps as yet unknown non-oscilloscope applications. In another part of these materials, the Supreme Court holds that Benson, who disclosed a method of converting binary coded decimal information to binary information, for use in telephone switching systems, is not entitled to patent protection for such an untaught and unenabled use of the method as in Shepardizing case citations or running trains.)

3. Justice Grier, dissenting in Morse, asks, "What is meant by a claim [specifically, Morse's claim 8] being too broad?" What's the answer? Grier said, "It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally." That is, only if the claim encroaches beyond the frontiers of the prior art (that is, covers prior art devices). Do you agree with Grier? What's Taney's response to this? What does section 112(a) of the patent code say about this?

4. In a part of the opinion in this case, the Court rejected an argument that the English Court of the Exchequer had approved the grant of a patent on a natural principle in the case of Neilson's patent for the blast furnace (Neilson v. Harford, 151 Eng. Rep. 1266, 8 M & W 806, Web. Pat. Cases 295 (1841)). The Court explained that the Exchequer had said: “[A]fter full consideration we think that the plaintiff does not merely claim a principle, but a machine, embodying a principle, and a very valuable one. We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces, and his invention then consists in this: by interposing a receptacle for heated air between the blowing apparatus and the furnace.” The concept of the discovery of a new principle being treated as if the principle were well known, and the question being whether the plaintiff had first invented a novel and unobvious mode of applying it by a mechanical apparatus, will appear again, in the next chapter. Moreover, the importance of apparatus limitations, such as the receptacle interposed between the blowing apparatus and the furnace, will recur.

Sections 101 and 112, ¶¶ 1-2 of the Patent Act,
35 U.S.C. §§ 101 and 112, ¶¶ 1-2

§ 101.   Inventions patentable

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement therefor, subject to the conditions and requirements of this title.

§ 112.   Specification

(1) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(2) The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.


1. § 101 provides one way to deal with the problems of claims like Morse's 8th claim. It may be said that Morse did not "invent" or "discover," within the meaning of Art. I, § 8, cl. 8, the use of EMF to communicate intelligible signs at any distance. Or it may be said that the process, if it is one, of claim 8 is not the kind of process that § 101 covers. Do you see any difficulties with either approach?

2. § 112 ¶ 1 provides another way to deal with claim 8 and similar claims. Did Morse describe and enable the fax machine? Television? Therefore, does claim 8 cover them?

3. § 112 ¶ 2 requires the applicant to provide claims that particularly point out and distinctly claim the subject matter which the applicant regards as his invention. Did Morse's claim 8 lack specificity, so that you cannot ascertain what it covers? Did it cover what Morse invented? Anything else as well? Did Morse regard the use of EMF to communicate intelligible signs at any distance to be his invention? Is § 112 ¶ 2 drafted in terms that adequately address the problem of the inventor with Napoleonic delusions? The CCPA, a court predecessor to the Federal Circuit, maintained that, unless "some material submitted by the applicant, other than his specification, shows that a claim does not correspond in scope with what he regards as his invention," it must be presumed that the claim states what the applicant "regards as his invention." In re Conley, 490 F.2d 972, 976 (CCPA 1974); see In re Miller, 441 F.2d 689, 692 (CCPA 1971). How would you argue for an interpretation of § 112 ¶ 2 that the claim must be construed to cover only what a reasonable person would regard as his invention?

Problems With Standards and Practices Used in Examination of
Patent Applications for Software-Related Inventions

Excerpt from PTO Notice, 58 Fed. Reg. 66,347 (Dec. 20, 1993)

Different sectors of the software industry have expressed concern over the ability of the PTO to examine patent applications for software-related inventions effectively. Much of the discussion involves the lack of availability of printed documents, patents, and other evidence of public use of the invention before the application was filed ("prior art") that can be used by examiners as a basis for denying the grant of a patent. Factors contributing to this problem include:

Concerns other than access to and use of prior art have also been cited. For example, some concern has been expressed that the standards used by examiners to assess novelty and/or obviousness over prior art are not reflective of industry standards, with the effect that patents are granted for well known or obvious software techniques. Others have questioned the closed nature of the examination process, with no public intervention prior to grant, while some have criticized the current options for contesting the validity of granted patents (e.g., the PTO reexamination process or litigation in the Federal courts). In view of this, the PTO is interested in public input on how to improve the examination process for patent applications for software-related inventions. Interested members of the public are invited to offer comments on the following:

  1. Do patents and printed publications provide examiners with a sufficient and representative collection of prior art to assess novelty and obviousness of software-related inventions? If not, how can existing collections of prior art be supplemented to provide examiners with a complete collection of prior art?

  2. Can an accurate measurement of the ordinary level of skill in the art in the field of computer program ming be derived from printed publi cations and issued patents?

  3. Should the PTO impose a special duty on patent applicants for software related inventions to disclose information relevant to their inventions (e.g., one that is higher than in other areas of technology)? (Under current Rule 56, 37 CFR 1.56, all patent applicants are required to disclose to the PTO any information of which they are aware that is pertinent to the invention they claim in their patent applicant. The standard does not require the patent applicant to search or locate relevant information and present it to the Office for consideration.)

4. Do the standards governing novelty and obviousness (§§ 102 and 103), as applied by the PTO and the federal courts, accurately reflect inventive activity in the field of software design and development?

5. Should implementing a known process, technique, system or method of doing business on a computer be viewed as being novel and nonobvious if, but for the use of software, the overall process, technique, system or method is well known?

Link to section A of chapter 8

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