Recent US Decisions Limit Patentable Subject Matter

Two recent decisions in the US Court of Appeals for the Federal Circuit (Court), In re Stephen Comiskey and In re Petrus Nuijten, have restricted the availability of patents for processes by requiring that the processes be tied to otherwise patentable subject matter. Stephen Comiskey appealed the rejection of his claims related to an arbitration method. The Court upheld the rejection, ruling that an algorithm is patentable subject matter only if it is embodied in, operates on, transforms or otherwise involves another class of statutory subject matter. The arbitration method at issue was found to depend entirely on the use of mental processes, which the Court held not to be patentable, regardless of its practical utility. Since the 1998 decision of the Court in State Street Bank & Trust Co v Signature Financial Group, Inc (149 F 3d 1371), it had generally been thought that a method could be patentable so long as it was tied to the real world and had a practical application (this is, the method must be "useful, concrete and tangible"). The disallowed Comiskey claims were connected to the real world through aspects such as interacting with documents, but the Court found this to be insufficient. Nevertheless, those claims that require a computer to operate were found to be patentable subject matter; however, the Court stated that the routine addition of modern electronics to an unpatentable invention typically creates a prima facie case of obviousness. In another recent decision, In re Petrus Nuijten, the Court also limited the scope of patentable subject matter by holding that electromagnetic signals are not patentable, even if they are tied to a transitory medium, such as pulses in a fibre optic cable. The court rejected signals as processes, which the Court stated must include an act or a series of acts, which it found the claimed digital watermarking technique did not. The Court also found that the technique did not fit into the other three classes of patentable subject matter (machine, manufacture or composition of matter). Some observers have noted that these decisions, particularly Nuijten, are inconsistent with the earlier State Street decision and that the Court resorted to precedents that the Federal Circuit has seldom cited. The Nuijten decision demonstrated a return to focusing on the four categories of subject matter, an approach that State Street had expressly rejected in favour of a focus on practical utility. For the Comiskey decision (2006-1286), see: http://www.cafc.uscourts.gov/opinions/06-1286.pdf For the Nuijten decision (2006-1371), see: http://www.cafc.uscourts.gov/opinions/06-1371.pdf For related commentary, visit: http://www.pli.edu/patentcenter/blog.asp?view=plink&id=102 and http://www.patentlyo.com/patent/2007/09/ineligible-subj.html Summary by: Tom Feather