Legally Speaking: Revisiting Patentable Subject Matter

Intellectual Property and Patents

Article Snapshot


Pamela Samuelson


Communications of the ACM, Vol. 61, pg. 20, July 2008


This article examines key cases deciding whether inventions like software can be patented.

Policy Relevance

The Federal Circuit should rule ideas not involving the transformation of matter or mechanical processes are not patentable, invalidating some software patents.

Main Points

  • For some years, the courts held that anything made by man could be patented, including business methods, resulting in a flood of patent applications in nontraditional area such as software or finance.

  • The Federal Circuit will reconsider this trend in the Bilski case, in which the Board of Patent Appeals rejected a patent on a method for pricing and trading contracts relating to energy use.

  • Recently, several Supreme Court Justices have asked questions suggesting that they doubt that the Federal Circuit has taken the right approach in allowing software patents.

  • The Board of Patent Appeals has taken the position that a process cannot be patented unless it involves a mechanical process or the transformation of matter.

  • If the Federal Circuit upholds the Board, software patents that involve the transformation of matter or that claim technological processes would be upheld, but those that do not would be invalidated.


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