Engineering Expert Witness Blog

      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.

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