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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.

21st century proposals



  • America Invents Act, adopted in September 2011, but watered down to the point of being ignorable

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)

(Most of the important case law in the USA involves discussing this section)

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 and is defined (100(b)) as "process, art, or method, and includes a new use of a known process". 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).

In a ruling on human genes (nothing to do with software), the court's unanimous decision ruled that human genes cannot be patented because:

Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention. Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.[2]

USC 102 (prior art)

About prior art.

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 112(f)

About "functional claiming".

Discussed in EFF's brief for CLS Bank v. Alice (2012, USA): [1]

USC 122 (secrecy of applications)

Patent application are kept confidential by the USPTO.

USC 122(a) and MPEP 1216.01 were cited[3] by the USPTO to explain why Bilski's patent application text could not be published despite it being the object of an important court case.

USC 271

Section (f) was the subject of Microsoft v. AT&T (2006, USA), in which "According to reports, about half of the damage award is based on foreign sales under US patent law section 271(f)."

For more information:

USC 273 (business methods limitation)

§273(b)(1) allows a "defence" for "prior user rights for business methods". In the Bilski v. Kappos decision, Justice Kennedy pointed at the existence of this defence as an indication that the legislature had wanted business method patents to exist.

USC 284 (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

External links