Computer-related inventions present challenges for the U.S. Patent system. There are a number of issues involved. For example, there is the issue of whether a computer-related invention incorporates an abstract idea, but that is saved for later articles. This article addresses preliminary issues of whether the computer-related invention falls within one of four permissible statutory categories under U.S. patent law.
And it is necessary to think about what we mean by a ‘computer-related invention?” Are we talking about executable code stored on a hard drive? About the same executable code but while it is being transmitted either by cable or wirelessly? About a manufacturing system that has devices controlled by executable code? Are we thinking about source code that must be read by a computer and then compiled? What if someone wants to define a computer-related invention based a novel data structure? And then someone may simply define a computer-related invention as a method than can be performed with a computational system. Are all of these treated the same? The answer is no. But as later discussed, the Applicant does have some control over how their invention is treated.
Preliminarily, there are a number of requirements before a patent application can be issued as a patent. First there are the issues of whether the invention novel and non-obvious. Second there are issues of whether the patent application describes the invention so as to (1) show that the inventors had possession of the invention at the time of filing and (2) enables (e.g. shows or instructs) one skilled in the art how to make and use the invention. But the focus of this article is whether the invention is patent-eligible subject matter. That is, is the subject matter of the invention something that is even eligible for patent protection – putting aside other issues.
The starting point for analysis is the patent claim. A patent application has a number of parts. There is a written description of embodiments of the invention and there are drawings. All of these can affect patentability. But for issues of patent subject matter eligibility, the starting point is the patent claim, which is a short legal definition of the claimed invention. The patent claim must define the invention in a way that is patent eligible. The patent claim must define the invention in a way that is patent eligible under U.S. law:
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 U.S.C. Section 101 (Bold added). This statute creates four, and only four, categories of patentable subject matter: 1) Processes (e.g. methods to be performed with computational machinery); 2) Machines (e.g. computational hardware); 3) Manufactures (e.g. a hard drive or computer disk with stored executable instructions); 4) Compositions of matter (e.g. perhaps materials created using a computationally-controlled system or process).
All inventions must fall within one of the above four categories to be eligible for patent protection under U.S. law. That includes, but is not limited, the computer-related inventions. But an Applicant has the ability to cast their patent claims in an attempt to fall within at least one of the four categories. Indeed, as will be discussed in the next portion of this article, the same invention can be claimed in various ways to come with different ones of these four statutory categories. Then there is the issue of how the scenarios at the beginning of this article would fit into those categories. But that is for discussion in Part 2 of this Article.