We’ve been discussing hurtles which must be jumped in order for an inventor’s creation to be considered for a patent. Federal statutes, namely 35 USC § 101, define the bases of patentability, including providing definitions on key terms, such as what constitutes a machine, an article of manufacture, and a composition of matter. Today we’ll wrap up our discussion on determining patent eligibility when we explore the final hurtle by defining process.
To get an understanding of what is meant by process, we must look to the lawsuit of Gottschalk v. Benson, a case involving patentability of a mathematical algorithm within a computer program. In this case the US Supreme Court held that a process is a series of steps or operations that transform substances or came about by way of a newly invented machine.
Based on the Court’s definition, a process can be many things, from a production line that transforms corn into corn chips within a food manufacturing plant to a mathematical algorithm running within software on the platform of a newly devised type of computer. However, the term usually pertains to a series of operations or steps, most frequently manufacturing in nature, where physical substances are transformed into useful products, that is, they possess the quality of utility, as discussed earlier in this blog series. A “physical substance” is anything of a physical nature existing on our planet.
Before I end this series I’d like to mention that under 35 USC § 101 an invention can be eligible for a patent if it makes a useful and beneficial improvement to an existing machine, article of manufacture, composition of matter, or process. That is to say, something may have already been patented which performs a specific function, but if that is improved upon in any significant way, it may receive a new patent.
For example, suppose an improved process for manufacturing food products was developed by adding additional steps to an existing patented process. If this improvement results in benefits such as lowered production costs, increased production rate, or reduced health risks to consumers, then this improved process may be eligible for a patent under 35 USC § 101.
Next time we’ll begin an exploration of the growing presence of 3D animations within the courtroom, specifically how they bring static 2D patent drawings to life.
Archive for May, 2013
Imagine having freshly baked pastries available to you all day long, every day, while at work. I’m not talking about someone bringing in a box of donuts to share, I’m talking about baked goods on a massive scale. This is what I experienced in one of my design engineering positions within the food industry. These baked goods constituted the articles of manufacture of the food plant, and they presented a constant temptation to me.
Just what constitutes an article of manufacture is another aspect of the second hurtle which must be passed to determine patent eligibility. It is addressed under federal statutes governing the same, 35 USC § 101, and is contained within the same area as the discussion of what constitutes a machine, a subject we took up previously in this series.
Why bother defining articles of manufacture? Well, while hearing the patent case of Diamond v. Chakrabarty regarding genetically engineered bacterium capable of eating crude oil, the US Supreme Court saw fit to define the term so as to resolve a conflict between the inventor and the patent office as to whether a living organism could be patented.
The net result was the Court declared that in order to be deemed a patentable article of manufacture the object must be produced from either raw or man-made materials by either hand labor or machinery and must take on “new forms, qualities, properties, or combinations” that would not naturally occur without human intervention. In other words, a creation process must take place and something which did not previously exist must be caused to exist.
The court’s definition of articles of manufacture encompasses an incredible array of products, much too vast to enumerate here. Suffice it to say that the defining characteristic is that if it should consist of two or more parts, there is no interaction between the parts, otherwise it could be categorized as a machine. In other words, the relationship between their parts is static, unmoving. An example would be a hammer. It’s made up of two parts, a steel head and wooden handle. These parts are firmly attached to one another, so they act as one.
Next time we’ll continue our discussion on the second hurtle presented by 35 USC § 101, where we’ll discuss what is meant by composition of matter.