PATENTABILITY OF COMPUTER PROGRAMS
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Author’s Note
In this information era, and with the rise of the internet, obtaining protection for computer programs and other technological innovations appears quite challenging. Therefore, it is essential to know the law governing the patentability of computer programs. The technological invention must first meet the basic requirements for patentability, namely, novelty, non-obviousness, and proper subject. Next, the invention must meet other specific court-developed principles regarding the patentability of computer programs. Initially, inventors of computer programs had to rely on other intellectual property protection methods such as copyright. (Burgunder, 2011, p. 150). However, the situation changed with the decision in (Diamond v. Diehr, 1981) when the Supreme Court declared a computer program patentable.
Following the decision in (Diamond, 1981) above, courts in the U.S. developed a test that required a patentable computer program to satisfy two steps: whether the invention contains a mathematical algorithm; and whether the algorithm is applied to physical elements or process. (Burgunder, 2011, p. 152). In essence, a computer program would be patented if the program went beyond the mathematical algorithm to effect a process so that the Patent will not be protecting the mathematical algorithm. This reasoning explains the Supreme Court’s decision in Diamond, 1981, that the invention was integrated into the physical function of the industrial process. However, that standard limited the patentability of computer programs which did not involve a physical process. It follows; a technological invention that was not integrated into any physical function was not patented. For example, an invention that processed numbers and displayed them on a screen could not be patented.
The situation changed when the standard was broadened to include technological inventions that do not necessarily involve a physical process. In (Arrhythmia Research Technology, Inc. v. Corazonix Corp., 1992), the Federal Circuit court declared the patentability of an invention that processed signals into data, performed calculations on the data, and relayed the information on a monitor. When this invention is compared to that in Diamond, 1981, the invention in Diamond was more physical than that in (Arrhythmia, 1992). This shows that the courts began recognizing technological inventions using a lower threshold than the one provided by the Freeman-Walter-Abele test.
The situation changed again in (Re Bilski, 2008), where the Federal Circuit Court of Appeals introduced the machine-or-transformation test. This test provides that an inventor must either prove that the invention is integrated into the machine, or that it transforms an item from one form to another. Concerning transformation, the court held that the invention must apply fundamental principles to transform data into different forms. In 2010, the Supreme Court issued a review on this case and held that the PTO should not rely solely on the machine-or-transformation test. It follows; the more important thing in computer programs is not the mathematical algorithm- which is but a form of language- but the design and architecture of the program.
From the above analysis, Roger Schlafly cannot obtain a patent for the prime numbers. The prime numbers do not pass the first stage of scrutiny of patentability. For instance, he did not invent the prime numbers. The numbers constitute a fundamental principle. Therefore, Roger cannot satisfy the novelty requirement. Next, the numbers seem to satisfy the machine-or-transformation test. The machine-or-transformation test requires that an invention meets either of two conditions- the invention must be integrated into a machine or the invention transforms data from one form to another. Roger’s invention satisfies the second requirement because it transforms the numbers into coded messages between computers. However, per the Supreme Court’s review of (Re Bilski, 2008), the PTO should go beyond the machine-or-transformation test. In that regard, the prime numbers represent a language (coding) between the computers. Patents for computer programs seek to protect design and architecture, but not the language or codes. Therefore, Rogers cannot obtain a patent for the numbers.
REFERENCE
Arrhythmia Research Technology, Inc. v. Corazonix Corp., 2958 F.2d 1053 (1992) Federal Circuit.
Burgunder, Lee. Legal Aspects of Managing Technology. (2011). South-Western Cengage Learning, 5th edition, pp. 149-158.
Diamond v. Diehr, 450 U.S. 175 (1981).
Re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).
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