John G. Costa 0
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Recommended Citation John G. Costa, Patent Law, 64 Fordham L. Rev. 725 (1995). Available at: http://ir.lawnet.fordham.edu/flr/vol64/iss3/3
John G. Costa
The United States Constitution grants Congress authority to
"promote the Progress of Science and useful Arts." 121 Pursuant to this
authority, Congress enacted the Patent Act, 1" which grants to
inventors, for a limited time,' the exclusive right to use and sell their
creations. The United States patent system developed by Congress and
the courts promotes the development of "technologically valuable
intellectual goods."' 24 When Congress promulgated the Patent Act in
1954, however, it did not contemplate the modem technologies which
comprise the information superhighway.'1 These technologies stress
the limits of patent law in its current form.
The scope of United States patent law is determined by statute." s
Accordingly, whether a specific invention is patentable or whether an
issued patent is infringed depends on a court's interpretation of the
appropriate statutory provision.
The primary issue in patent law is whether a certain invention is
entitled to protection. Only inventions that fall into the categories
enumerated in § 101 of Title 35 of the United States Code-any "new
and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof "-are patentable.12 7 The
Patent Act does not protect the inventor or discoverer of "an abstract
idea, principle or force, law of nature, or natural phenomenon."'' 2
A discovery or invention must be novel in order to be entitled to
patent protection. Even subject matter included in one of the § 101
categories is not patentable if, before the invention thereof, the
subject matter was (1) patented, invented, known, or used in the United
States or (2) patented or described in a printed publication in the
United States or a foreign country.'29 Additionally, an invention or
discovery is not patentable if, more than one year prior to the date of
the application for a patent in the United States, the subject matter
was (1) patented or described in a printed publication in the United
States or a foreign country or (2) used by the public or sold in the
United States. 130
Subject matter must also be "nonobvious" in order to obtain
protection under the Patent Act. An invention or discovery fails to
satisfy this requirement if the subject matter is "obvious... to a person
having ordinary skill in the art to which said subject matter pertains"
at the time of invention. 131
The Patent Act provides patent holders with remedies for
infringement of their patents. 32 It is actionable infringement to make, use, or
sell any patented invention within the United States during the term
of the patent without the permission of the patent holder. 133 One may
also be held liable for patent infringement if they "actively induce[ ]
infringement of a patent."''" Additionally, the sale of certain items
can constitute infringement under the Patent Act. For example, one
who sells material components of a patented invention within the
United States, with knowledge of the components' intended infringing
use, is liable for contributory infringement unless the item is "a staple
article.., of commerce suitable for substantial noninfringing use."1' 35
Finally, it is infringement to import into the United States, or to sell or
use within the United States, a product produced through a process
protected by the United States patent law.' 36
Application for patent protection is also governed by statute. A
patent application must contain a "specification" that describes the
invention, and the manner and process of making and using it, in such
a way as to enable a person skilled in the art to which the invention
pertains to make and use the invention. 37 Additionally, the
specification must "conclude with one or more claims [that] particularly
point[ ] out and distinctly claim[ ] the subject matter [for] which the
applicant" seeks patent protection. 38
A claim contained in an application may be either a product claim,
which covers a final product without reference to how the product is
produced, or a process claim, which covers the use of a particular
method used to produce a product.' 39 For example, if a process claim
covers the use of steps A, then B, then C to produce D, it is not the
130. 35 U.S.C. § 102(b) (1988). The subject matter denied patent protection under
§ 102 is referred to as "prior art." See 35 U.S.C. § 103 (1988).
131. 35 U.S.C. § 103 (1988).
132. Remedies for patent infringement include injunctions, damages, and attorney
fees. See 35 U.S.C. §§ 283-285 (1988).
133. 35 U.S.C. § 271(a) (1988).
134. 35 U.S.C. § 271(b) (1988).
135. 35 U.S.C. § 271(c) (1988). It is also infringement to supply materials outside of
the United States for use in a manner that would constitute patent infringement if
performed in the United States. 35 U.S.C. § 271(f) (1988).
136. 35 U.S.C. § 271(g) (1988).
137. 35 U.S.C. § 112 (1988).
139. 2 Donald S. Chisum, Patents § 8.05 (1995).
production of D, nor the linking of A, B, and C that infringes the
patent, but only the specific utilization of A, then B, then C to
produce D. In contrast, a product patent covering a system of individual
components, but not the components themselves, would not be
infringed by the manufacture of any one of the components, but only by
the integration of those components into the patented system.
It is important to note that a patent is country specific; thus, a
patent granted in the United States protects only against infringement
occurring in the United States.140 Moreover, because patent law
differs significantly among nations, it is possible that an application for
patent protection may be granted in certain countries and refused in
others.41 Because of these inconsistencies, it is possible that someone
who is legally prohibited from manufacturing or selling an item in one
country may legally manufacture or sell that item in a different
country. Furthermore, as the contents of a patent are public knowledge,
one could utilize a patented invention of a competitor to compete in a
foreign market where no patent had been granted.
The emergence of technologies which comprise the information
superhighway raises several issues pertaining to patent law. One such
issue is whether computer software and computers that run software
constitute patentable subject matter. These items involve
"mathematical algorithms," which, as abstract ideas, are not entitled to patent
protection.142 An invention that is an application of a mathematical
algorithm, however, is patentable subject matter.'4 3
In In re Alappat, the court held that "a computer operating
pursuant to [computer] software [could be] patentable subject matter" even
though the computer is programmed to apply a mathematical
algorithm.'" At first glance, Alappat appears to have opened the door
for patenting computer software. The court in In re Trovato, however,
closed this door slightly when it denied patent protection to computer
software because the patent claims did nothing more than recite a
mathematical algorithm.'45 The Trovato court distinguished this
decision from its holding in Alappat, noting that the specification in
Alap140. See Burk, supranote 124, at 42. When there is even a limited connection
between the alleged infringement and United States territory, however, courts generally
take the opportunity to enforce United States patent laws. Id.
141. For example, the United States follows a "first-to-invent" system, which
awards the patent to the first person to conceive and put into practice a new
invention. See Barger, supranote 125, at 368. Most other nations, however, follow a
"firstto-file" system, which grants patent protection to the first person to file a valid
application with the patent office, regardless of whether that person was the first to
conceive the invention. Id at 368-69.
142. In re Abele, 684 F.2d 902, 907 (C.C.P.A. 1982).
144. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994).
145. In re Trovato, 42 F.3d 1376, 1380 (Fed. Cir. 1994).
pat included an extensive discussion of certain hardware, while the
specification in Trovato made only a brief mention of hardware.'4 6
The increasing number and use of computer bulletin board systems
("bbs's") also bring to the forefront a number of patent law issues.
One such issue is whether a description of an invention transmitted on
a bbs constitutes a "printed publication" sufficient to preclude patent
protection under the Patent Act.' 47 The resolution of this issue by a
court may depend on the accessibility of the online description. 48 For
example, a description posted on a private bbs accessible to only a
select group of users is less likely to be considered a "printed
publication" than a description posted on a nationwide public bbs. 49
Widespread use of bbs's may also create other patent law questions
and problems. For example, a participant in an online discussion may
attempt to claim sole or joint ownership of an invention later patented
by another participant, based on communications that occurred during
the discussion. Additionally, the vast amount of easily accessible
information available on bbs's may lead to increased claims of
"obviousness" by patent infringers.
The information superhighway may also affect the content of patent
applications. Under the Patent Act, the description of an invention in
a patent application must be sufficiently clear to enable one skilled in
the art to practice the invention. 150 One who is skilled in the art is
expected to be able to practice those aspects of the art that are
common knowledge or that have been revealed in the publications
pertaining to the art.' 51 A patent applicant could argue that information
available online is common knowledge not required in the
specification. In addition, it is generally agreed that a specification in a patent
application can incorporate publications by reference rather than
reciting a description of a product or process.15 2 The existence of bbs's
146. See id. at 1383.
147. See generally Barger, supranote 125. For a discussion of the effect of a printed
publication on an invention's patentability, see supra notes 129-30 and accompanying
148. See Barger, supra note 125, at 365.
149. See id. If the existence of an obscure computer file can serve as a defense to
patent infringement, a sophisticated computer user could place trade secret
information in a set of widely dispersed files. A very real dilemma for inventors is when to
keep an invention a trade secret and when to seek a patent. With a trade secret an
inventor runs the risk that another inventor will patent the idea and force the first
inventor to cease production. With a patent, however, an inventor reveals his
creation to the world, thus enabling others to use the invention when the patent expires,
use the invention in a country without patent protection, or design around the
patented invention. The best of both worlds is to have a trade secret that no one else can
patent. The Internet may actually enable inventors to do just that, by allowing
information to be published and accessible, but so widely dispersed in cyberspace that it
would take decades to compile.
150. 35 U.S.C. § 112 (1988).
151. 2 Chisum, supra note 139, § 7.03, at 7-22 & n.3.1.
152. 3 id. § 11.02[f], at 11-33.
raises the issue of whether courts, in considering material
incorporated by reference, will afford references to computer files the same
weight as printed publications.
Another important issue concerning the effect of new technologies
on the current patent law is the possibility of online infringement. As
mentioned previously, a patent can be infringed only in the country
where it was issued. 5 3 The global nature of the information
superhighway, which allows computer users in one nation to access
computers in other nations, has widespread implications for patent
For example, a computer operator in the United States could access
a computer network, such as the Internet, and load a software
program covered by a United States process patent onto a computer
located in a foreign country that has not granted a patent for the
process. The computer operator could then run the patented program
on the foreign computer and obtain results that are then transmitted
for use back to the United States. The results, as an unpatented
product produced from a patented process, could be utilized in the United
States without being subject to claims of infringement.
Similarly, assume the grant of a United States patent for a
computerized manufacturing process to produce a widget and for a widget
produced by that manufacturing process. The patent would be
infringed if a widget was produced with the patented process in the
United States or if a widget produced by the patented process was
used or sold in the United States. Technology exists such that one
computer, running a given computer software or hardwired program,
can control the running of one or more machines, anywhere in the
world, to produce a number of products. Thus, a computer running in
the United States could cause a machine in a foreign country to
produce the hypothetical widget. The patented process was not
completed in the United States and therefore it is unclear whether the
patent was infringed or if the widget can legally be used or sold in the
This brief consideration of the information superhighway's impact
on patent law discusses several issues of contention. Undoubtably,
these issues comprise only a portion of the issues that may come
before the courts for resolution. Indeed, the greatest impact of the
information superhighway may be to force the countries of the world
to negotiate a uniform patent treaty and, eventually, issue
internationally recognized and enforceable patents.
153. See supra note 140 and accompanying text.
121. U.S. Const. art. I, § 8 , cl . 8.
122. Pub . L. No. 593 , 66 Stat . 792 ( 1952 ) (codified as amended at 35 U .S.C. §§ 1 - 376 ( 1988 & Supp . V 1993) ) .
123. The term of a patent granted in the United States is 17 years . 35 U.S.C. § 154 ( 1988 ).
124. Dan L. Burk , Patentsin Cyberspace: Territorialityand Infringement on Global Computer Networks , 68 Tul. L. Rev. 1 , 26 ( 1993 ).
125. See G. Andrew Barger , Comment, Lost in Cyberspace: Inventors, Computer Piracy and "PrintedPublications"Under Section 102(b) of the PatentAct , 71 U. Det. Mercy L. Rev . 353 , 353 - 54 ( 1994 ).
126. The laws governing patents in the United States are found at 35 U.S.C. §§ 1 - 376 ( 1988 & Supp . V 1993 ).
127. 35 U.S.C. § 101 ( 1988 ).
128. In re Alappat, 33 F.3d 1526 , 1552 (Fed. Cir. 1994 ).
129. 35 U.S.C. § 102 ( a ), (e) ,(g) ( 1988 ).