Legislation in the USA

Legislation in the USA gives no direct indication about whether software ideas should be patentable. Discussion thus usually focusses on case law in the USA.

• U.S. Patent Act -- 35 USCS Sects. 1 - 376
• The Patent Act of 1790

The constitution

The constitution allows for the possibility of patents to exist "To promote the Progress of Science and useful Arts". This wording imposes two requirements. First, the idea has to be in one of the categories "Science" or "useful Arts", and second, adding patents has to promote progress.

Given the studies showing that patents harm software progress, this seems to clearly leave software patents as unconstitutional because they fail to meet the requirement of promoting progress.

On one hand, the 2003 Supreme Court deferred to Congress in the Eldred v. Ashcroft, allowing Congress to interpret this aspect of the constitution, at least for copyright (which is also established by the "To promote the Progress..." sentence).

On the other hand, in the 1966 Graham v. John Deere case, the Supreme Court ruled:

The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. [...] This is the standard expressed in the Constitution and it may not be ignored.

The US Code

USC 101 (patentable subject matter)

About "Statutory categories", i.e. patentable subject matter), the legislation says:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [35 USCS Sects. 1 et seq.].

The word "process" was added in 1952. Most software patents and business methods are claimed as a "process" (example: the Bilski patent) but some are claimed as a "machine" (example: State Street).

USC 101 has been used three times by the US Supreme Court, rejecting patents in Gottschalk v. Benson (1972) and Parker v. Flook (1978), and upholding a patent in Diamond v. Diehr (1981). USC 101 is also the subject of Bilski v. Kappos (pending, as of May 2010).

USC 102 (prior art)

About prior art.

• Federal Circuit Extends the Scope of 102(e) "Secret Prior Art", June 7^th 2010, Patently-O
• BPAI: Under §102(e), Provisional Application Considered Prior Art as of its Filing Date, Oct 23^rd 2008, Patently-O

USC 103 (obviousness)

Nonobviousness analysis.

The most recent court case to affect this test is the Supreme Court's 2007 ruling KSR v. Teleflex.

(see patently-o's discussion of nonobvious and anticipated)

USC 271

Section (f) was the subject of Microsoft v. AT&T (2006, USA).

USC 273 (business methods limitation)

About "prior user rights for business methods".

USC 284 (damages)

damages

USC 285 (attorney fees)

Attorney fees

USC 287(c) (medical limitation)

Medical activities exempted from remedies - or patentable but the doctor isn't liable.

Related pages on ESP Wiki

• The Patent Reform Act (USA)

External links

• Title 35, Part II--Patentability Of Inventions And Grant Of Patents, gpo.gov
• Title 35, Part II--Patentability Of Inventions And Grant Of Patents, law.cornell.edu
• Wikisource: US Constitution, section #8
• Wikipedia: United States patent law
• Wikipedia: Title 35 of the United States Code
• 35 U.S.C. 100 Definitions. - Patent Laws, from uspto.gov
• a 2000 proposal to change legislation to reduce/abolish business method patents
  • Congress Takes Another Aim at Business Method Patents - discussing the above proposal