Intellectual Property Law, Prof. Siebrasse	Patent Subject Matter

Intellectual Property Law
Patent
Subject Matter

1.	Statutory Basis
a.	"invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;
b.	27(8) No patent shall be granted for any mere scientific principle or abstract theorem.
2.	Statutory Basis
a.	The definition of “invention” has generally been interpreted broadly
i.	I think the word "art" in the context of the definition must be given its general connotation of "learning" or "knowledge" as commonly used in expressions such as "the state of the art" or "the prior art". 
(a)	Shell Oil Co. v. Commissioner of Patents SCC
ii.	Congress intended statutory subject matter to "include anything under the sun that is made by man."
(1)	Diamond, Commissioner of Patents and Trademarks v. Chakrabarty USSC
3.	Statutory Basis
a.	The U.K. has traditionally had a more restrictive approach to subject matter
b.	But the U.K. Act on which that approach was based was very different from the Canadian Act

4.	Ideas, Principles & Discoveries
a.	27(8) No patent shall be granted for any mere scientific principle or abstract theorem.
b.	Is the objection to “abstractness” or to patenting a “theorem”?
i.	Abstract theorem
(a)	Or
ii.	Abstract theorem
5.	Idea
a.	Is an idea patentable?
b.	In Tye-Sil the patent was for an rowing machine which could be flipped up to use for weights.  
c.	There was no difficulty in putting the idea into practice

6.	Tye-Sil
a.	Defendant’s argument
(1)	"There is invention in the putting into practice of the idea. What must not be obvious to constitute an invention, is the execution of the idea, not to come up with the idea itself"
ii.	As a matter of law, there can be no invention in an idea
iii.	As a matter of fact (uncontested), there was no invention in its implementation
7.	Tye-Sil

a.	. . .but I think you are losing grasp of the substance and seizing the shadow when you say that the invention is the manufacture as distinguished from the idea. It is much more true to say that the patent is for the idea as distinguished from the thing manufactured. 
i.	Per Fletcher Moulton L.J.
b.	The patent protects the inventive contribution
c.	The patent is not merely for the embodiment
8.	Tye-Sil

a.	I think you can have a Patent for an idea, which is new and original and very meritorious if you suggest a way of carrying it out. If you do not so suggest you cannot no doubt have a Patent; but the learned Judge goes on to say: "Unless there is some invention necessary for putting the "idea into practice it is not patentable"... he goes on to deny that there could be a Patent for it because he finds that when once that idea had been suggested there was no difficulty in carrying it into effect. To my mind that is wrong.
i.	Per Fletcher Moulton L.J.
9.	Tye-Sil
a.	That there can be no invention in the legal sense in a pure idea is not to be doubted.
b.	The invention resides in the concrete expression of the idea
c.	But, in my understanding, invention may be present notwithstanding that there was no difficulty putting an idea into effect once it was conceived. 
d.	Is this consistent with Shell Oil?
10.	Tye-Sil

a.	It is true that there is no patentable invention unless the means to achieve the objective sought have been found, but there may be an "idea" in the means found as there is an "idea" in the objective sought. 
b.	The invention cannot remain abstract
c.	But the inventive contribution may lie entirely in the idea
11.	Discoveries
a.	Tye-Sil shows that an invention that depends only on an idea for its inventiveness is patentable.  
b.	Is the same true if the innovation lies only in a discovery regarding a fact of nature?  
i.	Are ideas different from discoveries in any relevant sense?  
ii.	Does it matter if the patent would monopolize all relevant applications of the discovery?
12.	Continental Soya
a.	The discovery: that soy beans will whiten flour
b.	The patent: the enzyme derived from soy beans
c.	. . .it has been laid down that a patent cannot be obtained for a discovery in the strict sense. . . .[but] the discovery which led to the patentee devising a process of apparatus may well supply the necessary element of invention required to support a patent. 
13.	Shell Oil
a.	Issue: Is the following statement correct?  "An idea may be new and original and very meritorious, but unless there is some invention necessary for putting the idea into practice it is not patentable." 
b.	Answer: With the greatest respect for the learned Judge, that, in my opinion, is quite contrary to the principles of patent law...
(1)	Shell Oil Co. v. Commissioner of Patents 
14.	Discovery
a.	Shell Oil and Continental Soya are entirely consistent.
b.	There is no indication in Continental Soya that there was any inventive element in extracting the enzyme itself after the discovery was made
c.	Continental Soya is clear that the discovery itself may supply the [only] “necessary element of invention”
15.	Discovery
a.	A disembodied idea is not per se patentable. But it will be patentable if it has a method of practical application. 
i.	Shell Oil
16.	New Use
a.	Note also from Shell Oil, a new use for an existing product is patentable
b.	The patentee cannot prevent anyone from using the product for previously known uses

17.	Idea and Discovery
a.	There can be no patent for a discovery or idea in the abstract
b.	But a patent may issue for a discovery or idea so long as it is given concrete expression
c.	A discovery or idea may be the sole source of the element of inventiveness which is necessary to support the patentbe patented
i.	So long as the invention itself has concrete form
d.	The effect of the patent may be to monopolize all uses of the idea
i.	Cf Continental Soya, Shell Oil, Tye-Sil
18.	Computer Implemented Inventions
19.	Computer Implemented Inventions
a.	Software per se is not patentable
i.	Just as a discovery or idea per se is not patentable
b.	Only an invention is patentable
i.	The software must be embodied in some invention
c.	The fact that a computer is part of the invention is not in itself a bar to patentability
20.	The Issue
a.	Is an invention patentable if the “inventive concept” lies solely in the algorithm implemented by the software?
i.	Assuming that all other requirements, e.g. non-obviousness, utility, novelty, are satisfied
21.	Schlumberger
a.	In order to determine whether the application discloses a patentable invention, it is first necessary to determine what, according to the application, has been discovered.
b.	What is new here is the discovery of the various calculations to be made and of the mathematical formulae to be used in making those calculations.
22.	Schlumberger
a.	If those calculations were not to be effected by computers but by men, the subject-matter of the application would clearly be mathematical formulae and a series of purely mental operations; as such, in my view, it would not be patentable. A mathematical formula must be assimilated to a "mere scientific principle or abstract theorem" for which s-s. 28(3) [27(8)] of the Act prescribes that "no patent shall issue". 
23.	Schlumberger
a.	In effect, Schlumberger says “If the only inventive element in the ‘invention’ is an algorithm, then patenting the invention is equivalent to patenting the algorithm, and this is prohibited by s.27(8)”
24.	Schlumberger
a.	Rationale
i.	If the appellant's contention were correct, it would follow that the mere fact that the use of computers is prescribed to perform the calculations prescribed in the specifications, would have the effect of transforming into patentable subject-matter what would, otherwise, be clearly not patentable.
b.	Is this persuasive?  Cf Diehr
25.	S.27(8)
a.	Does s.27(8) say
i.	27(8) No patent shall be granted for any...abstract theorem.
b.	Or does it say
i.	27(8) No patent shall be granted for any...abstract theorem.
26.	Patent Office Interpretation
a.	The interpretation of Schlumberger in Batelle is typical
b.	Is Batelle consistent with Schlumberger?
i.	Patents for computer implemented inventions were often challenged at the examination stage and the challenges were routinely rejected for reasons similar to those found in Batelle
ii.	Such patents are no longer rejected by the Patent Office
27.	Batelle
a.	PAB quotes Schlumberger
i.	In order to determine whether the application discloses a patentable invention, it is first necessary to determine what, according to the application, has been discovered.
ii.	Schlumberger meant this to say “what is the inventive concept”?
b.	PAB then says
i.	We are satisfied that applicant's discovery amounts to the embodiment of an idea in a means to carry it out. 
ii.	PAB takes it to mean “what is the invention as a whole”
28.	Batelle
a.	PAB quotes Schlumberger
i.	I am of opinion that the fact that a computer is or should be used to implement discovery does not change the nature of that discovery.
ii.	Schlumberger said that if the nature of the discovery is an algorithm, then it is not patentable
b.	PAB then says
i.	It is our view that applicant's disclosure of apparatus amounts to more than merely making calculations. 
ii.	PAB takes it to mean that if the invention as a whole is patentable subject matter, it does not matter what the inventive concept is
29.	S.27(8)
a.	Does s.27(8) say
i.	27(8) No patent shall be granted for any...abstract theorem.
b.	Or does it say
i.	27(8) No patent shall be granted for any...abstract theorem.
c.	The Schlumberger court seems to have adopted the first interpretation
d.	The PAB seems to have adopted the second interpretation
30.	Schlumberger
a.	Is Schlumberger consistent with Tye-Sil?
b.	Is Batelle consistent with Tye-Sil?
31.	Computer Implemented Inventions in the U.S.
32.	Flook
a.	Mackay Radio and Funk Bros. point to the proper analysis for this case: The process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all.  Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the "basic tools of scientific and technological work," it is treated as though it were a familiar part of the prior art.
33.	Flook
a.	Respondent's process is unpatentable under @ 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.  
b.	Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. 
c.	Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.  
34.	Flook
a.	Compare the approach in Flook to that in Schlumberger
35.	Diehr
a.	Diehr is an example where the invention was held to be patentable because there was an inventive concept in the application of the algorithm
b.	Note that in Diehr the algorithm in question was in fact part of the prior art.
i.	Arrhenius died in 1927
36.	Benson
a.	Benson was the first case to the U.S. Supreme Court on the question of the patentability of computer implemented inventions
b.	Note that the algorithm in Benson was trivially obvious, but the U.S. Patent Office did not challenge the patent on the basis of obviousness, but only on the basis of subject matter
37.	Benson
a.	It is conceded that one may not patent an idea.  But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case.  The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which   means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
38.	Benson
a.	What is wrong with “pre-empting” the algorithm?
39.	Alappat
a.	What was the inventive concept at issue in Alappat?
40.	Alappat
a.	Rather, at the core of the [Supreme] Court's analysis in each of these cases [Benson, Flook & Diehr] lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.
b.	Ie abstract algorithm is not protectable
41.	Alappat
a.	Diehr also demands that the focus in any statutory subject matter analysis be on the claim as a whole. 
42.	Alappat
a.	Given the foregoing, the proper inquiry in dealing with the so called mathematical subject matter exception to @ 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept, whether categorized as a mathematical formula, mathematical equation, mathematical algorithm, or the like, which in essence represents nothing more than a "law of nature," "natural phenomenon," or "abstract idea." If so, Diehr precludes the patenting of that subject matter. That is not the case here. 
43.	Policy
a.	What are the arguments in favour of patenting theorems, so long as they are applied?
b.	What are the arguments against patenting even applied theorems?
i.	“Pre-emption”
ii.	Common heritage
c.	What are the arguments against patenting abstract theorems?
i.	Anticipation
ii.	Uncertainty