Chisum: Gottschalk v. Benson is a "Failure"

Donald Chisum released an interesting article titled "Patenting Intangible Methods: Revisiting Benson (1972) After Bilksi (2010)" where he cogently points out that most of the problems pertaining to patentable subject matter can be attributed to the Supreme Court's decision in Benson, and that the decision "served noone's interest . . . Its ambiguity allowed software patent proponents to subvert any bar that software patent opponents desired [and] also deterred legitimate inventors of software-implemented inventions from applying for patent protection."

Chisum provides some interesting background information on the state of technology heading into the Benson decision:

Through the 1960's, programming (software) for the giant computers was perceived as a service that a computer vendor, such as IBM, would provide so as to adapt a computer system to a customer's particular needs. There was essentially no distinct software industry or market, and it was not in the interest of the vendors that there be one. A big vendor did not relish being subject to copyright or patent claims by smaller companies and independent inventors. Hence, in that era, IBM opposed both copyright and patent protection for software.  Subsequently, as its interests changed, IBM changed its positions. In a  dispute with a Japanese rival, Fujitsu, over mainframe computer operating systems, IBM championed copyright protection for software in the United States and around the world. With its development of the "PC" personal computer, IBM pursued patents on the PC system and successfully licensed them.

And the PTO

Pre-1972, policy and practice in the Patent Office favored IBM's no-patents-on-software position. Supporting the position was a recommendation in 1966 by a "President's Commission on the Patent System."

And who was responsible for the Benson patent?  Bell Laboratories of AT&T, one of the few large, non-vendor entities doing independent research applicable to computer programming.

When the Benson opinion was announced, Chisum noted that an interested observer should have had immediate concerns:

First, the opinion came down on November 20, 1972, only a month after argument (October 16, 1972), hardly long enough for a thoughtful deliberation . . . Second, and more importantly, the author of the opinion was Justice William O. Douglas.  Justice Douglas was notoriously hostile toward the patent system. That Justice Douglas was unreasonably biased against patents is supported by the fact that two provisions of the 1952 Patent Act were intended to correct hyperbolic statements in Douglas opinions.

Chisum then takes on the oft-quoted sentence from Benson: "Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."

How did the Court derive this supposedly well-established triple exclusion? First, the "phenomena of nature" exclusion comes from decisions such as the 1948 Funk case.  But the Court makes no attempt to explain how a natural phenemenon exclusion relates to the algorithm claims in question. If a newly created algorithm is a "phenomenon of nature," so must be all human inventive activity. That cannot be true. Humans are indeed "part of nature," but there could be no patent system if all human inventions are phenomena of nature.

Second, the Court refers to "mental processes" as unpatentable but cites no authority, even though there was extensive prior case law on the "mental steps doctrine" in the lower courts.

Third, and most distressingly, the Court's exclusion of "abstract intellectual concepts" stems from an out-of-context combination of two statements from old cases that did not even involve intangible processes.  The first statement--"an idea of itself is not patentable"--is from the 1874 Rubber-Tip Pencil decision.  The second statement--"a principle, in the abstract" is not patentable--is from the 1852 Le Roy opinion.  The tenor of the two cases is, contrary to the implication of Benson, a positive one: that an "idea" or a "principle" is patentable when applied to create a novel and useful process or product even though the idea or principle itself is not patentable because it is either well known or too abstract. Rubber-Tip Pencil held that a patent on attaching a rubber eraser to a pencil was invalid for lack of novelty. The Benson-quoted phrase--"An idea of itself is not patentable"--was meant, in context, to say that a "good idea" for a product (good from a business or marketing point of view) did not meet the patentability requirements if the product itself lacked novelty (or was an obvious modification of the prior art from a technical point of view).

Finally,

The Court, per Justice Douglas, concluded the short opinion with a discussion of the then-raging debate on patenting computer programs. It quoted the Presidential Commission recommendation against patenting computer programs. It noted that "extending" the patent laws to cover "these programs" was a matter not for the courts but for Congress . . . Congressional action was not forthcoming. In the 38 years since Benson, Congress has not directly addressed patent eligible subject matter.

Read/download the paper here (link)

See also Donald S. Chisum, "Weeds and Seeds in the Supreme Court's Business Method Patents Decision: New Directions for Regulating Patent Scope" (link)