Benson Revisited: The Case Against Patent Protection For Algorithms and Other Computer Program-Related Inventions
![handle is hein.journals/emlj39 and id is 1039 raw text is: BENSON REVISITED: THE CASE AGAINST PATENT
PROTECTION FOR ALGORITHMS AND OTHER
COMPUTER PROGRAM-RELATED INVENTIONS
Pamela Samuelson*
Abstract
For the purpose of clarifying the public policy debate over the proper
role for patents in the protection of computer program innovations, this
article revisits the 1972 Supreme Court decision in Gottschalk v. Benson.1
It argues that although the Benson Court did not clearly articulate the
rationale for its decision, there is a basis in patent law for denying patents
to computer program algorithms and to a number of other computer pro-
gram-related innovations.2 The author takes issue with Professor
* Professor of Law, University of Pittsburgh School of Law. The author wishes to thank the
following people for their insightful comments on earlier drafts of this paper: Professors Martin J.
Adelman, Ralph Brown, Peter Jaczi, Dennis Karjala, Robert Merges, and Jerome Reichman; attor-
neys James Dabney, Brian Kahin, Steven Lundberg, and John Sumner; and technologists John Ham-
mer, Hans Oser, and Richard Stallman. Most of all she thanks her husband Robert J. Glushko for
his technical expertise, his many editorial suggestions, and his patience during the time this article
was being written.
409 U.S. 63 (1972).
2 Throughout this article, the author has chosen the term computer program-related invention
or program-related invention to refer to the array of things for which patent applications might be
filed. The term includes not only algorithms, but also other components of a program (such as a data
structure, the modular design for a program, a design for accomplishing a particular function by
program, user interface functionalities, and the like). It also includes claims for improved industrial
processes that might include computer program components. It is the author's understanding that
these are the sorts of program-related inventions which the U.S. Patent and Trademark Office [here-
inafter Patent Office] considers under its current policy to be patentable subject matter when properly
claimed.
While the term program-related invention is potentially broad enough to cover claims for such
things as computer programming languages and even computer programs themselves, the author does
not intend to include these things within this term, for she does not believe that the Patent Office
currently regards either computer programs or programming languages to be patentable subject mat-
ter. The author is aware that Professor Chisum argues, based on In re Carver, 227 U.S.P.Q. (BNA)
465 (PTO Bd. App. 1985), that programs themselves should be patentable subject matter. See 1 D.
CHISUM, CHISUM ON PATENTS § 1.02[4], at 1-28.2 (1990). However, current Patent Office policy
does not accept claims tied to computer program source code instructions. See Oversight Hearing on
Computers and Intellectual Property Before the Subcomm. on Courts, Intellectual Property and the
Administration of Justice of the House Judiciary Comm., 101st Cong., 2d Sess. 7-8 (Mar. 7, 1990)
(statement of Jeffrey M. Samuels, Acting Commissioner of Patents and Trademarks) [hereinafter
Samuels Testimony]; see also PTO Report on Patentable Subject Matter: Mathematical Algorithms](ViewImageLocal?handle=hein.journals/emlj39&div=43&collection=&method=preview&ext=.png&size=3)
What Is HeinOnline?
Contact us for annual subscription options:
Already a HeinOnline Subscriber?
profiles profiles most
Benson Revisited: The Case Against Patent Protection For Algorithms and Other Computer Program-Related Inventions
Contact us for annual subscription options:
Already a HeinOnline Subscriber?
profiles profiles most