US Court of Appeals Refuses Rehearing: Signal Claims Remain Unpatentable

The US Court of Appeals for the Federal Circuit has refused to rehear In Re Petrus A.C.M. Nuijten appeal. The original appellate decision found that a "signal" does not fit within the four statutory categories, and is thus unpatentable. The court could not place it as a process, machine, manufacture, or composition of matter. The court refused to rehear the case en banc, effectively affirming the original decision. Some judges dissented, noting that the original decision is not consistent with precedent, including the Supreme Court decision in Diamond v. Chakrabarty: "patentable subject matter includes "anything under the sun that is made by man" except for certain enumerated exceptions: " The laws of nature, physical phenomena, and abstract ideas have been held not patentable" 447 U.S. 303, 309 (1980)." The dissent also argued that the distinction between a claim to a signal and a claim to a storage medium containing a signal "makes no practical sense" and is "artificial at best". As noted in an earlier E-TIPS, (see Canadian Patent Office Rejects Claims Relating to Sound Signals, Vol 6, No 5, August 29, 2007), the Canadian Patent Office has taken the position that acoustic and electromagnetic signals are unpatentable, because they do not fall within the categories of patentable subject matter under the Patent Act, namely an art, process, machine, manufacture or composition of matter. US Appellate Decisions on Nuijten: http://www.cafc.uscourts.gov/opinions/06-1371o.pdf; and http://www.cafc.uscourts.gov/opinions/06-1371.pdf Canadian Practice Notice on signals: http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/notice_aug14_07-e.html Summary by: James Kosa