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8 Ohio N.U. L. Rev. 535 (1981)
Diamond v. Diehr: The Patentability of Processes and Incorporated Algorithms

handle is hein.journals/onulr8 and id is 549 raw text is: THE UNITED STATES SUPREME COURT REVIEW Diamond v. Diehr: The Patentability of Processes and Incorporated Algorithms The Constitution of the United States authorizes Congress to award patents to promote the ... useful Arts.' Pursuant to that authority, Congress has established the criteria for patent eligibility in the Patent Act.2 Traditionally, under the Act, patents would issue for either appara- tuses or processes.' This traditional classification of patents has been challenged as computer technology has developed and has been incor- porated into modern industrial processes. Industrial automation and com- puter science have developed to the point where a computer program can control various phases of an industrial process. A computer program, however, is ineligible for Oatent protection. The problem for industry has thus been whether any process which has a computer program as an in- tegral part constitutes patentable subject matter under the Patent Act. In- 1. U.S. CONST. art. I, §8, c. 8. 2. 35 U.S.C. §101 (1952). 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 therefor, subject to the conditions and requirements of this title. Id. The conditions and requirements of the Title are set forth in subsequent code sections 102 and 103. Section 102 requires the invention be novel, and §103 requires that the subject mat- ter not be obvious. Thus, the approach to patentability is a series of tests: 1) is the application for a process, machine, manufacture, or composition of matter (§101); 2) is the invention novel (§102); and 3) is the invention obvious (§103)? Each of these sections can act to reject an appli- cation; but, the threshold question is whether the application even covers patentable sub- ject matter-the test set forth in §101. Diamond v. Diehr, 450 U.S. 175, 188-91 (1981). For an analysis of the Diehr decision see D. Blumenthal, Supreme Court Sets Guidelines For Paten- tability Of Computer Related Inventions- DIAMOND v. DIEHR, 63 J. PAT OFF.SOc'Y 117 (1981). 3. P. ROSENBERG. PATENT LAW FUNDAMENTALS 6-5 (2d ed. 1980). 4. A prime example of this development is the very process at issue in Diamond v. Diehr. 5. A computer program is a set of instructions or steps by which a computer can solve a given problem. Likewise, an algorithm is a series of steps to which the Court has given the limited judicial definition of a procedure for solving a given type of mathemAtical problem. Gottschalk v. Benson, 409 U.S. 63, 65 (1972). Mathematical formulas, laws of nature and scien- tific theories describe and define relationships which exist between physical objects and operate regardless of whether they are discovered. They cannot be patented. By identify- ing algorithms with such unpatentable concepts as the forgoing, the Court has rendered algorithms unpatentable. Thus any computer program that can be considered an algorithm is not patentable subject matter under §101. For an argument that computer programs are not equivalent to mathematical formulas see Note, Parker v. Flook and Computer Program Patents, 30 HASTINGS L. J. 1627 (1979).

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