In Part 1 of this Article, we discussed the four statutory categories of inventions created by the U.S. patent laws:
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). As will be recalled, this statute creates four categories of patent eligible subject matter: 1) processes, 2) machines, 3), manufactures, and 4) compositions of matter. But how would these categories apply to some specific examples discussed in Part 1 of this Article?
Looking at the list in Part 1 of this article, what about the executable code stored on a hard drive? That would be a manufacturer. What about the manufacturing system that has devices controlled by executable code? That would be a machine. And what about a method than can be performed with a computational system? That would be a process. All of the above is very simplified, but in general, the above fall within one of the four statutory patent categories.
But what about the executable code being transmitted either by cable or wirelessly? This would be an attempt to patent a signal. An issue which is in dispute. For example, in In re Nuijten, (Fed. Cir. 2007) the Federal Circuit Court of Appeals ruled as follows: “A transitory, propagating signal like Nuijten’s is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” Despite the above from In re Nuijten, the issue of the patentability of signals is complex and we leave discussion of these complexities to another day.
What about the source code that must be read by a computer and then compiled? It could be argued that source code itself is “software per se” and is not a process, machine, manufacture, or composition of matter. But again, the complexities of this are left for another day.
What about data structured in a novel way? One could argue that data itself is neither a process, machine, manufacture, or composition of matter. For example, in Digitech Image Technologies, LLC v. Electronics For Imaging, Inc. (Fed. Cir. 2014), the Federal Circuit Court of Appeals ruled that a claim directed to a “device profile”, which was information about a device, was not directed to one of the four categories of eligible subject matter: “[T]he device profile claims of the ‘415 patent do not require any physical embodiment, much less a non-transitory one. The device profile, as claimed, is a collection of intangible color and spatial information. We therefore hold that the device profile claims of the ‘415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible.” Again, the law on information or data as patent eligible subject matter is complex and evolving. These complexities are beyond the scope of this article.
Based on the above, the starting point for analysis of patent subject matter eligibility is whether the claimed invention fits within one of the four statutory categories. But here, the patent applicant has a lot of control. The same computer-related invention can easily framed as different ones of the four categories. For example, supposed we want to patent an invention on a new way of controlling a cutting machine in cutting a steel bar. An Applicant could write claims to 1) a method performed by the cutting machine that is programmed to cut the steel bar (i.e. a process), 2) the cutting machine programmed to cut the steel bar (i.e. a machine), or 3) a computer disk bearing a program to control the machine in cutting the steel bar (i.e. a manufacture). Thus, the Applicant has a lot of flexibility in how to frame their invention.
So, what if a patent claim is directed to something that is at least one of a process, a machine, a manufacture, or a composition of matter? Does that mean the subject matter is patent eligible? Actually, that is just the starting point for further analysis. For example, the patent claim will likely be analyzed to determine if it recites an “abstract idea.” And if it recites an abstract idea, whether it recites something that is “significantly more” that the abstract idea. But what is an abstract idea and how does it affect patent subject matter eligibility? That is a subject for Part 3 of this series.