There have been more and more discussions and arguments on the patentability for computer programs resulting from the engineering and industrialization of computational and software technologies. The patentability of business method has been highlighted with the emergence and rapid spread of Internet, which adds fuel to such discussion and argument on the patentability of process patentability of process in recent years. The U.S. Supreme Court made a judgment on patentability of process in the Bilski case in 2010. In this essay, the author shall make an analysis of American treatment of such issue first, and then make a survey on the legislation and practice of China’s patent law as well as the differences between China and U.S. in patentability of process.
I. Introduction to patentability of process
(1). The scope of patentable subject matter
 |
| Miao Yu |
The patentable subject matter is dealt with in 35 U.S.C. §101, which provides, “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” There are four types of protectable inventions or discoveries, namely, process, machine, manufacture, or composition of matter, which are patentable under §101. The U.S. Congress used the word “any” to qualify the process, machine, manufacture, or composition of matter in legislation. It can be inferred that the law has a very broad coverage in terms of the scope of patentable subject matter.
It seems that there is no limitation to the kinds and scope of patentable subject matter from the literal provisions of §101. However, there are three exceptions to patentable subject matter according to the case law set by U.S. Supreme Court in line with the provisions of §101, from which patentable subject matter shall not extend to laws of nature, natural phenomena and abstract ideas. It is held that they naturally belong to all mankind as the source of human knowledge instead of being monopolized by an individual. The three exceptions are essentially consistent with the “new and useful” requirement under §101 though they cannot be found in the text of the law.
The patentability under §101 is just a threshold for patent protection. In accordance with the statutory provisions, for an invention to be patentable, it has to satisfy not only the subject matter requirement of “process, machine, manufacture, or composition of matter,” but also the novelty and nonobviousness requirements, in addition to the requirement of full disclosure in the description.
(2). “Process” as used in the patent law sense
There is a relatively extensive and uncertain meaning of “process” under the U.S. patent laws. The word “art” was used in the U.S. Patent Act of 1793 to refer to “process,” and it was substituted by the current “process” under the U.S. Patent Act of 1952. It is ruled by the U.S. Supreme Court that the substitution makes no changes to the scope of patentable process because it is equivalent to “art” under the U.S. patent laws. In addition to the four statutory categories of patentable subject matter, §101 gives the definition and description of “process,” from which it can be inferred that the U.S. Congress did so in 1952 to deal with the possible disagreement on the meaning of “process” in the future. According to the current effective Section 100(b), the term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
 |
| Ran Jianguo |
Statutory language must be interpreted according to their ordinary contemporary and common sense meaning, unless otherwise defined. Pursuant to the rule for literal interpretation, the precise meaning of a vague terminology should be acquired through the analysis of its semantic synonyms. However, the definition should be followed where its meaning is clearly prescribed under the law itself. The rule cannot be applied to the interpretation of “process” because there is a clear definition under Section 101(b). In other words, “process” cannot be interpreted with reference to §101. The very definition under Section 101(b) should be followed in patent examination and litigation. No interpretation is permitted if it intends to interpret the “process” beyond the ordinary, contemporary and common meaning of the word, not to mention the limitation or exclusion of such meaning by way of setting some conditions. By ordinary meaning, it refers to a program or a series of acts, action or operation resulting in a certain consequence, or a series of acts or steps aiming at obtaining a particular result.
That processes are classified according to certain criteria and some are outright excluded from patentable subject matters has been ruled out by the U.S. Congress in its legislation and is also contrary to the legislative intent of the U.S. patent laws.
II. Patentability test of process in the U.S.
(1). The patentability test in the industrial age
In Cochrane v. Deener of 1876, the Court interpreted process as “an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” Therefore, the patentability criteria for a process depend on whether it can achieve this or not. This is the so-called the patentability criteria of “machine-or-transformation.”
The applicant has to make a choice according to the “machine-or-transformation” patentability criteria under §101. He should prove that his claim must be tied to a particular machine or apparatus, or can transform a particular article into a different state or thing. The exploitation of particular machine or apparatus or specific transformation of thing shall constitute an essential limitation. In other words, such exploitation or transformation is a necessary element for those processes being applied for patent protection. “Machine-or-transformation” originated in the age of industrial revolution, during which the majority of inventions were focused on machinery and chemical industries. Therefore, the vast majority of the inventions were in line with the “machine-or- transformation” patentability criteria.
(2). The patentability test in the information age
The whole patent system, including patentability of process, has been challenged by the change of times, particularly the emergence and spread of computers, software, the Internet, and other new technologies. It is believed that patent should not always be denied to some processes below the “machine-or-transformation” patentability criteria in the information age. Some courts have shown a kind of turn and flexibility on this matter. The rigid adherence to the “machine-or-transformation” patentability criteria has been replaced by the conditional grant of patent to some processes below the “machine-or-transformation” patentability criteria.
(a). Early practice in the information age The year 1972 witnessed the breakthrough of information age in the case of Gottschalk v. Benson, which involved the issue whether mathematical algorithm was patentable or not. The U.S. Supreme Court ruled in the case that there is no patentability in mathematical algorithm because it was a kind of abstract ideas. The case of Parker v. Flook in 1978 saw a turn from the rigid adherence to the “machine-or-transformation” patentability test to a flexibility of granting patent to some processes below the “machine-or-transformation” patentability criteria.
The 1978 case was related to the question whether a method for updating an alarm limit (used to signal abnormal conditions) in a catalytic conversion process was patentable or not. The U.S. Supreme Court ruled that patent should not be granted to the claimed process because all the claims, including mathematical algorithm, belonged to existing technologies instead of the claimed process. Later on, the U.S. Court of Customs and Patent Appeals (CCPA) formulated the “Freeman-Walter-Abele” test summarizing the Freeman case, the Walter case, and the Abele case. There are two steps in the newly established criteria: the first is a judgment on whether the claimed algorithm is the algorithm of the case of Benson or not, and then the judgment on whether the algorithm has an influence on the physical elements in some way or is a kind of physical process steps.
After the arrival of the information age, American courts tried to include those new processes below the “machine-or-transformation” patentability criteria in the patentable subject matter scope while continuously followed such a tradition. Hence the “Freeman-Walter-Abele” criteria was formulated, which is a good example of judicial practice keeping in pace with the new technological era. According to the “Freeman-Walter-Abele” criteria, the patentability of algorithm shall be solely judged after dividing the claims into separate parts, which is not in conformity with the rules of patentability established by the U.S. Supreme Court in the case of Flook, and by the Federal Circuit Court of Appeals in the case of the State Street Bank, and the case of AT&T. Consequently, the courts have no longer applied the “Freeman-Walter-Abele” criteria later on.
(b). Some further effort in the information age
The wave of informationization compelled the American courts to continue their efforts to explore new patentability of process, and the useful, concrete, and tangible result test was established in practice. The criteria could be seen as early as in the case of Alappat and was citied as a reference in the case of the State Street Bank, and the case of AT&T. The court ruled in the case of Alappat that the applied claim should be deemed as a patentable subject matter because it “is not a disembodied mathematical concept which may be characterized as an ‘abstract idea,’ but rather a specific machine to produce a useful, concrete, and tangible result.” This is the useful, concrete, and tangible result test for the patentable process. In the case of the State Street Bank, the court held that the processing system belonged to patentable subject matter because the system takes data representing discrete dollar amounts through a series of mathematical calculations to determine a final share price—a useful, concrete and tangible result. In the AT&T case, the court stated that “because the claimed process applies the Boolean principle to produce a useful, concrete and tangible result without pre-empting other uses of the mathematical principle, on its face the claimed process comfortably falls within the scope of §101.”
It can be seen from the above that mathematical algorithm itself is only an abstract idea without any real meaning and shall not be deemed as patentable subject matter unless the algorithm is applied to a specific practice. A process will usually produce a useful, concrete and tangible result if it must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing. The criteria of “producing a useful, concrete and tangible result” have been used as a very useful reference in patent review and judicial practice to determine that a process is either a basic principle or the practical application of such principle. However, the criteria cannot be directly applied when determining whether an applied claim falls within the categories of patentable subject matter under §101 or not. Therefore, the criteria of “producing a useful, concrete and tangible result” are just secondary references to the “machine-or-transformation” patentability criteria, not to mention the substitution of the latter to function as the criteria to determine the patentability of process.
(c). The open criteria for the future
The U.S. Supreme Court gave a detailed elaboration on patentability of process in Bilski. It evaluated the status and role of the “machine-or-transformation” patentability criteria in determining the patentability of process. After admission of applying the “machine-or-transformation” patentability criteria for the determination of whether a process is patentable or not in history, the Supreme Court pointed out that later precedents have proven that such criteria are not the sole criteria. To this end, the Supreme Court also reiterated its views on the “machine-or-transformation” patentability criteria, which were stated in the case of Benson and the case of Flook. The Supreme Court held in the case of Benson that transformation of an article into a different state or thing is an important clue to the patentability of a process, and clearly opposed to the practice of “not granting patent to process below the ‘machine-or-transformation’ patentability criteria.”
In the Flook case, the Supreme Court made it clear that a process can be granted a patent even if it does not meet the “machine-or-transformation” patentability criteria. Therefore, the U.S. Supreme Court held that past precedents have shown enough that the “machine-or-transformation” patentability criteria are only a useful clue and survey instrument to determine whether a process belongs to the patentable subject matter under §101 or not, and has never been the sole criteria for such determination. After pointing out again that it is not a good choice to set restrictions on the Patent Act, which is not consistent with the text of the Patent Act, the U.S. Supreme Court held that the “way to define the scope of patentable subject matter should follow the definition of process under Section 100(b) with reference to the guidance stated in the Benson case, the Flook case and the Diehr case.” The court, of course, may refer to the “machine-or-transformation” patentability criteria, or the “useful, concrete and tangible result” test when determining the patentability of a process in a specific case. Furthermore, the U.S. Federal Circuit Court of Appeals may develop other limitative criteria provided that it is in line with the purpose of §101 and is not contrary to the text provisions of §101.
It can be seen from the above that the American courts have paved the way for the emergence of new patentability of process, and rooms have been left for it to be developed provided that it is in line with the purpose of and is not contrary to the textual provisions of §101.
III. Patentability of process in China
In accordance with Article 2 of the Patent Law of the People’s Republic of China, the “inventions” means inventions, utility models and designs. The term “invention” refers to any new technical solution relating to a product, a process or an improvement thereof. The term “utility model” refers to any new technical solution relating to a product’s shape, structure, or a combination thereof, which is fit for practical use. Therefore, the process applying for patent in China must be a technical solution. Obviously, China’s patentability of process is a kind of technological arts test.
Article 25 of China’s current Patent Law stipulates that scientific discoveries, rules and methods for mental activities, methods for the diagnosis or for the treatment of diseases are not within the parameter of patent protection or patentable subject matter. Scientific discoveries refer to the revelation of substances, phenomena, transformation process and their features and laws, which objectively exist in nature.
Rules and methods for mental activities are rules and methods governing people’s thinking, expression, judgment and memorization.
In China, an invention involving computer programs must meet the technical standards of Article 2 of the current Patent Law in order to be an object under patent protection. It must be a technical solution to a technical issue by way of technical means in line with the laws of nature, and thus produce a technical effect in conformity with the laws of nature. Patent may be granted to such an invention aiming at dealing with external technical data or improving computer’s internal performance. However, a patent involving a computer program shall not be granted to an invention if it is only an algorithm or mathematical rules, a computer program itself or such a program is simply recorded on CD-ROM, disks, and other carriers.
IV. Comparison of patentability of process between China and U.S.
China’s patentability of process are obviously technological arts test according to the aforementioned Patent Law, which requires that the process applying for a patent must be a technical solution. Therefore, non-technical methods, including business methods are directly excluded from the scope of patentable subject matter. As it can be seen form the above that American judicial history has proven the incorrectness of the practice that process was classified according to certain criteria and was then directly excluded from the patentable subject matter. China’s criteria are quite different from the U.S. in this regard.
Article 25 of China’s current Patent Law excludes scientific discoveries from patentable subject matter, which has much in common with the U.S. Patent Act in its excluding laws of nature, physical phenomena and abstract ideas from patentable subject matter. However, Article 25 of China’s current Patent Law also excludes rules and methods for mental activities from patentable subject matter just because there are no technical means adopted, laws of nature exploited, technical issuesolved, technical effect produced, and therefore they constitute no technical solution. Thus, rules and methods for mental activities do not belong to patentable subject matter in China because they do not meet the technical standards set by Article 2 of China’s current Patent Law, which is quite different from the American legislation and judicial practice in this regard.
As mentioned earlier, an invention involving computer programs must meet the technical standards in order to be included in patentable subject matter under China’s Patent Law. In China, such an invention shall not be included in patentable subject matter where it is only an algorithm or mathematical rules or a computer program itself. According to the American practice, an invention shall be excluded from patentable subject matter where it only involves an algorithm or mathematical rules because they are deemed as abstract ideas. However, the U.S. courts do not say that computer programs shall be directly excluded from patentable subject matter. As far as computer programs are concerned, China directly closes the door of patentable subject matter, which happens to coincide with the U.S. Federal Circuit Court of Appeals who ruled in the case of Bilski that the “machine-or-transformation” patentability criteria are the sole standards to determine whether computer programs fall within the categories of patentable subject matter or not.
V. Conclusion
The absolute patentability of process cannot be found in American judicial practice. The U.S. courts have developed such criteria in history along with the American economic and technical advancement. However, China is still adhering to the traditional patentability of process which has been strictly followed by the U.S. courts in the industrial age. It is easy to see the difference between China and the U.S. in this regard. Someone may attribute this to the national conditions and the gap in economic and technological development. However, it cannot be denied that all the countries have entered into the information age to different extents because of the emergence and the rapid spread of Internet technology. Therefore, China should make proper adjustment in patentability of process in order to meet the practical requirements of informationization while striving for industrialization.
(Translated by Yuan Renhui)
