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Legislation in the USA

Revision as of 21:04, 18 May 2010 by Ciaran (talk | contribs) (USC 101 (patentable subject matter): remove country since context makes it clear)

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.

The constitution

The constitution allows for the posibility of patents to exist to promote the useful arts. Given the studies showing that patents harm software progress, this seems to clearly leave software patents as unconstitutional.

On one hand, the 2003 Supreme Court deferred to Congress in the Eldred v. Ashcroft, allowing Congress to interpret this aspect of the constitution. Congress has not legislated specifically on the validity of software patents.

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:[1]

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: Bilksi) 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.

http://www.patentlyo.com/patent/2008/10/bpai-under-102e.html

USC 103 (obviousness)

Nonobviousness analysis.

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

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

  • http://www.law.cornell.edu/patent/35uscs101.html