Parker v. Flook
437 U.S. 584 (1978)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A process is not patentable subject matter under 35 U.S.C. § 101 if its only novel feature is a mathematical formula or algorithm. The addition of conventional, post-solution activity to an unpatentable principle does not transform it into a patentable process.
Facts:
- Dale R. Flook developed a method to update alarm limits during the catalytic chemical conversion of hydrocarbons.
- Alarm limits are numbers representing thresholds for process variables like temperature and pressure, which trigger an alarm if exceeded.
- Flook's method consisted of three steps: 1) measuring the current value of a process variable, 2) using a new mathematical formula (algorithm) to calculate an updated alarm limit, and 3) adjusting the physical alarm limit to the new value.
- The only novel feature of Flook's claimed method was the mathematical formula itself.
- All other aspects of the method, including monitoring process variables, using alarm limits, and adjusting them, were conventional and well-known in the industry.
- The method was primarily useful for computerized calculations that could automatically adjust alarm settings in petrochemical and oil-refining processes.
Procedural Posture:
- Dale R. Flook filed a patent application for a 'Method for Updating Alarm Limits'.
- The patent examiner at the Patent and Trademark Office rejected the application, finding it was an attempt to patent a mathematical formula.
- The Patent and Trademark Office Board of Appeals affirmed the examiner's rejection.
- Flook appealed to the United States Court of Customs and Patent Appeals.
- The Court of Customs and Patent Appeals reversed the Board of Appeals' decision, holding that the claim was patentable because it did not wholly preempt the formula.
- The Acting Commissioner of Patents and Trademarks (Parker) petitioned the U.S. Supreme Court for a writ of certiorari, which was granted.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a method for updating alarm limits in a chemical process, which is novel only because it employs a specific mathematical formula, constitute patentable subject matter under 35 U.S.C. § 101?
Opinions:
Majority - Mr. Justice Stevens
No. A claim for an improved method of calculation, even when tied to a specific end use, is not patentable subject matter under § 101. The discovery of a mathematical formula is like the discovery of a law of nature, which is a 'basic tool of scientific and technological work' and cannot be patented. Adding conventional 'post-solution' activity, such as adjusting an alarm, does not make an unpatentable principle patentable, as this would exalt form over substance. The proper analysis requires treating the mathematical algorithm as if it were part of the prior art; the remaining steps of the process must then be evaluated to determine if they contain any inventive concept. Here, once the novel formula is treated as known, the remaining steps of monitoring and adjusting alarms are conventional and thus the process as a whole is unpatentable.
Dissenting - Mr. Justice Stewart
Yes. The claimed process should be considered patentable subject matter under § 101. The majority improperly imports the criteria of novelty and inventiveness from §§ 102 and 103 into the § 101 subject-matter inquiry. The sole question under § 101 is whether the claim is for a 'process,' which it clearly is. Flook's claim is distinguishable from prior precedent because it does not wholly preempt the mathematical formula but is limited to a particular end use. Thousands of patented processes contain steps or elements that, in isolation, would be unpatentable, such as laws of nature. The patent claim should be considered as a whole, and its novelty or obviousness should be assessed separately under the appropriate statutory sections, not at the threshold § 101 stage.
Analysis:
This decision significantly narrowed the patentability of computer software and processes involving mathematical algorithms, continuing the cautious approach from Gottschalk v. Benson. It established an analytical framework where the algorithm itself is treated as prior art, forcing inventors to demonstrate that the application of the algorithm is itself inventive. This 'point of novelty' approach was controversial and created uncertainty for software patents, pushing the question of patent eligibility for computer-related inventions toward Congress and later Supreme Court decisions like Diamond v. Diehr, which would later distinguish this case.
Unlock the full brief for Parker v. Flook