Gottschalk v. Benson
409 U.S. 63 (1972)
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Rule of Law:
A mathematical algorithm or formula that has no substantial practical application except in connection with a digital computer is not a patentable 'process' under the Patent Act because it constitutes an unpatentable abstract idea.
Facts:
- Respondents developed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.
- This method is an 'algorithm,' which is a procedure for solving a given type of mathematical problem.
- The patent claims were not limited to any specific machine, technology, or particular end use.
- The claims purported to cover any use of the method on any general-purpose digital computer.
- The mathematical steps could be performed on existing computers without new machinery, and could also be performed mentally without a computer.
Procedural Posture:
- Respondents filed a patent application in the U.S. Patent Office for a method of converting numerical information.
- The Patent Office examiner rejected two of the central claims (claims 8 and 13) of the application.
- Respondents appealed the rejection to the Court of Customs and Patent Appeals.
- The Court of Customs and Patent Appeals reversed the Patent Office's decision, finding the claims patentable.
- The Commissioner of Patents, Gottschalk, petitioned the Supreme Court of the United States for a writ of certiorari, which was granted.
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Issue:
Is a method for converting binary-coded decimal (BCD) numerals into pure binary numerals, which is essentially a mathematical algorithm with its only practical application being for a general-purpose digital computer, a patentable 'process' under the Patent Act?
Opinions:
Majority - Justice Douglas
No. A method for converting numerical information, which is essentially a mathematical algorithm, is not a patentable 'process' because it is an abstract idea. Longstanding precedent establishes that phenomena of nature, mental processes, and abstract intellectual concepts are not patentable subject matter as they are the 'basic tools of scientific and technological work.' While a process can be patented, historical cases like Cochrane v. Deener show that patentable processes typically involve the transformation and reduction of an article 'to a different state or thing,' such as manufacturing flour or vulcanizing rubber. The algorithm claimed here does no such thing; it merely manipulates abstract numbers. Granting a patent on this method would, in practical effect, be a patent on the algorithm itself, which has no substantial application outside of a computer. This would 'wholly pre-empt' the mathematical formula, preventing anyone from using this fundamental intellectual tool, which runs contrary to the principles laid out in cases like O'Reilly v. Morse. The Court concluded that extending patent protection to such programs is a policy matter for Congress to decide.
Analysis:
This landmark decision established the principle that abstract ideas and mathematical algorithms are not patentable subject matter under § 101 of the Patent Act. It created the 'abstract idea' exception as a significant barrier to the patentability of computer software, framing many software inventions as unpatentable algorithms rather than patentable processes. The Court's concern with 'preemption'—that a patent on the algorithm would monopolize the idea itself—became a central analytical tool in subsequent software patent jurisprudence. This case set the foundation for decades of legal debate and later Supreme Court decisions, like Alice Corp. v. CLS Bank, that refined the framework for determining the patent-eligibility of software.
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