stuff, no more patentable than E = mc2
or F = ma. What about when those steps
are put onto the tape of the Turing machine, onto a program running on the
hard drive of a computer?
For some time, the U.S. Court of Appeals for the Federal Circuit (the leading patent court in the U. S.) has seemed
to believe that computers can turn an
unpatentable idea into a patentable
machine. In fact, in this conception,
the computer sitting on your desk becomes multiple patentable machines—
a word-processing machine, an email
machine, a machine running the pro-
by an overworked and poorly incentiv-ized patent office. It is that the patent
was supposed to be granted at the very
end of a process of investigation and
scientific and engineering innovation.
The formulae, algorithms, and scientific discoveries on which the patented
invention was based remained in the
public domain for all to use. It was only
when we got to the very end of the process, with a concrete innovation ready
to go to market, that the patent was to
be given. Yet the ability to couple the
abstract algorithm with the concept
of a Turing machine undermines this
gram to calculate the tensile strength of
steel. I want to stress that the other bars
to patentability remain. My example of
miles-to-kilometers conversion would
be patentable subject matter, but, we
hope, no patent would be granted because the algorithm is not novel and is
obvious. (Though sadly, the PTO seems
determined to undermine this hope
by granting patents on the most mundane and obvious applications; two
excellent books by Besson and Meurer2
and by Jaffe and Lerner5 explore this
point, as well as other deeper problems with the patent system.) But the
concern here is not limited to the idea
that, without a subject-matter bar, too
many obvious patents will be granted
conception. Suddenly the patents are
available at the very beginning of the
process, even to people who are merely
specifying, in the abstract, the idea of
a computer running a particular series
of algorithmic activities.
The words “by means of a computer” seem to be an incantation of
magical power, able to transubstantiate the ideas and formulae of the public domain into private property.c And,
like the breaking of a minor taboo that
presages a Victorian literary charac-
ter’s slide into debauchery, once that
first wall protecting the public domain
was breached, the courts found it easier and easier to breach still others. If
one could turn an algorithm into a patentable machine (by simply adding “by
means of a computer”), then could one
not turn a business method into something patentable by specifying the organizational or information technology
structure through which the business
method is to be implemented?
You might wonder why we would
want to patent business methods. Intellectual property rights are supposed
to be handed out only when necessary
to produce incentives to supply some
public good, incentives that otherwise
would be lacking. Yet there are already
plenty of incentives to come up with
new business methods. (Greed and
fear are the most obvious.) There is
no evidence to believe we need a state-backed monopoly to encourage the development of new business methods.
In fact, we want people to copy the busi-nesses of others, lowering the price as a
result. The process of copying business
methods is called “competition” and
is the basis of a free-market economy.
Yet patent law would prohibit it for
20 years. So why introduce patents?
Brushing aside such minor objections
with ease in 1998, in a case called State
Street, the Court of Appeals for the Federal Circuit declared business methods to be patentable.d Could this really
be what Thomas Jefferson had in mind
when he said “I know well the difficulty
of drawing a line between the things
which are worth to the public the embarrassment of an exclusive patent,
and those which are not”?e I doubt it.
In 2008, the Court of Appeals for the
Federal Circuit revisited this ruling in a
case called In re Bilski.f Perhaps made
wary by several spankings they had recently received at the hands of the U.S.
c See, for example, In re Alappat, 33 F.3d 1526
(Fed. Cir. 1994); in light of the other cases discussed here, it is a contested issue which parts
of this decision survive today.
d State St. Bank & Trust Co. v. Signature Fin.
Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).
e Letter from Thomas Jefferson to Isaac Mc Pher-son (August 13, 1813) in The Writings of Thomas
Jefferson, vol. XIII, A.E. Bergh, ed. The Thomas
Jefferson Memorial Association of the United
States, Washington, D.C., 1907, 326–338; see
p. 335 at http://memory.loc.gov/ammem/col-lections/jefferson_papers/ mtjser1.html and
follow the “May 1, 1812” hyperlink, then navigate to image 1057.
f In re Bernard L. Bilski, 545 F.3d 943 (Fed. Cir.