Has Patenting Industrial Processes Now Become a Promethean Task?
May 29, 2012
By Richard Gilly
On May 21, 2012, the Supreme Court of the United States signaled its continued concern about potentially over-broad process or method patents by asking the Court of Appeals of the Federal Circuit to review a previous holding that a certain computer-implemented process was patentable. Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011). Earlier this Spring, the Supreme Court invalidated two process patents relating to a medical diagnostic procedure as constituting merely unpatentable laws of nature. Mayo Collaborative Services v. Prometheus Laboratories, 132 S. Ct. 1289 (2012).
Specifically, the Court held that a patent claim is not valid if it merely "inform[s] the relevant audience about certain laws of nature; any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately." The court likewise observed that simply implementing an abstract idea "on a …computer [is] not a patentable application of that principal."
The holdings in such cases are also applicable to industrial process patents, including those in the composites industry. In fact, in its recent opinion in Prometheus, the court elaborated on the standards for finding a process eligible for patenting by reference to two previous cases involving industrial processes. In one well-known case, Diamond v. Diehr, 45 U.S. 175, 185 (1981), a process for molding raw, un-cured rubber into various cured, molded products was found eligible for patenting. Even though the claimed process used a known mathematical equation, the Arrhenius equation, which could not be the basis for patentability, the claim also involved the steps of (1) monitoring the temperature inside the mold, (2) feeding the resulting numbers into a computer, which would use the Arrhenius equation to continuously recalculate the mold-opening time, and (3) configuring the computer so that it would signal a device to open the press. In holding the processed patentable, the Court found the way the additional steps integrated the equation into the process as a whole and were tied to operations of the machine transformed the process into an inventive application of an otherwise unpatentable formula.
The second case discussed by the Court in its Prometheus decision, Parker v. Flook, 437 U.S. 584, 590 (1978), involved an improved system for updating alarm limits in a catalytic conversion of hydrocarbons. The process was found not to be eligible for patenting, even though it included several process steps separate from any unpatentable algorithm or law of nature, including: (1) measuring the current level of the temperature; (2) using an apparently novel mathematical algorithm to calculate the current alarm limits; and (3) adjusting the system to reflect the new alarm-limit values. The Court in Flook felt that the chemical processes involved in catalytic conversion of hydrocarbons, the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for automatic monitoring-alarming were all "well known," and not sufficient to take the claim beyond an unpatentable algorithm.
From the brief discussion of the above cases, the patentability of industrial process may sometimes be a close question. Accordingly, it will be prudent to consider the Court's guidance when drafting process patent claims, and to vary the scope of such claims so as to anticipate possible future skepticism from the courts as to what inventive processes are patent-eligible.
This Akerman Practice Update is intended to inform firm clients and friends about legal developments, including recent decisions of various courts and administrative bodies. Nothing in this Practice Update should be construed as legal advice or a legal opinion, and readers should not act upon the information contained in this Practice Update without seeking the advice of legal counsel. Prior results do not guarantee a similar outcome.
On May 21, 2012, the Supreme Court of the United States signaled its continued concern about potentially over-broad process or method patents by asking the Court of Appeals of the Federal Circuit to review a previous holding that a certain computer-implemented process was patentable. Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011). Earlier this Spring, the Supreme Court invalidated two process patents relating to a medical diagnostic procedure as constituting merely unpatentable laws of nature. Mayo Collaborative Services v. Prometheus Laboratories, 132 S. Ct. 1289 (2012).
Specifically, the Court held that a patent claim is not valid if it merely "inform[s] the relevant audience about certain laws of nature; any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately." The court likewise observed that simply implementing an abstract idea "on a …computer [is] not a patentable application of that principal."
The holdings in such cases are also applicable to industrial process patents, including those in the composites industry. In fact, in its recent opinion in Prometheus, the court elaborated on the standards for finding a process eligible for patenting by reference to two previous cases involving industrial processes. In one well-known case, Diamond v. Diehr, 45 U.S. 175, 185 (1981), a process for molding raw, un-cured rubber into various cured, molded products was found eligible for patenting. Even though the claimed process used a known mathematical equation, the Arrhenius equation, which could not be the basis for patentability, the claim also involved the steps of (1) monitoring the temperature inside the mold, (2) feeding the resulting numbers into a computer, which would use the Arrhenius equation to continuously recalculate the mold-opening time, and (3) configuring the computer so that it would signal a device to open the press. In holding the processed patentable, the Court found the way the additional steps integrated the equation into the process as a whole and were tied to operations of the machine transformed the process into an inventive application of an otherwise unpatentable formula.
The second case discussed by the Court in its Prometheus decision, Parker v. Flook, 437 U.S. 584, 590 (1978), involved an improved system for updating alarm limits in a catalytic conversion of hydrocarbons. The process was found not to be eligible for patenting, even though it included several process steps separate from any unpatentable algorithm or law of nature, including: (1) measuring the current level of the temperature; (2) using an apparently novel mathematical algorithm to calculate the current alarm limits; and (3) adjusting the system to reflect the new alarm-limit values. The Court in Flook felt that the chemical processes involved in catalytic conversion of hydrocarbons, the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for automatic monitoring-alarming were all "well known," and not sufficient to take the claim beyond an unpatentable algorithm.
From the brief discussion of the above cases, the patentability of industrial process may sometimes be a close question. Accordingly, it will be prudent to consider the Court's guidance when drafting process patent claims, and to vary the scope of such claims so as to anticipate possible future skepticism from the courts as to what inventive processes are patent-eligible.
This Akerman Practice Update is intended to inform firm clients and friends about legal developments, including recent decisions of various courts and administrative bodies. Nothing in this Practice Update should be construed as legal advice or a legal opinion, and readers should not act upon the information contained in this Practice Update without seeking the advice of legal counsel. Prior results do not guarantee a similar outcome.
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