In Re Comiskey/In Re Nuijten – The Problem with Thoughts and Signals

For IP professionals who are responsible for overseeing development of their enterprise’s IP assets, in the realm of patent development the question often arises as to whether a particular idea or innovation is worthy of a patent application.  Aside from the basic prosecution questions of prior art and non-obviousness, a more fundamental question must be addressed: does the subject matter qualify under the relevant patent laws as a subject of patentability? 

One might conclude that the answer to this question is a fairly straightforward exercise; after all, the United States Patent Act provides patent protection for any “…process, machine, manufacture, or composition of matter…”  35 USC Section 101.   Patent case law within the United States (until recently) espoused a relatively broad view of what these words were intended to mean, with one court going so far as saying that “...anything under the sun that is made by man…”  is the subject of patentability.  (Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952))).

Such exuberance put aside, the reality is that the courts have attempted – with questionable success – to maintain a consistent watchfulness over the metes and bounds of what constitutes patentable subject matter.  And one of the key limits that the courts have tried to maintain is the notion that a patent should not issue unless the innovation has some colorable connection to a tangible product or process.  Put another way, the idea cannot be a description of an abstract concept; it must be reduced to some sort of embodiment in a physically-tangible item.  There really is no rhyme or reason as to why this requirement must be followed under United States patent law, except for the fact that the PTO and courts must find some place to “draw the line” when it comes to granting patent applications – without this “tangibility” requirement, the PTO would arguably have to issue patents for abstract ideas of every kind and sort.

As noted above, for a period of time the Federal courts did seem to broadly construe these subject matter requirements – but most observers have concluded that this trend seems to be coming to a close for the time being.  The Bilski case (discussed in prior posts) reflects this apparently-emerging trend; but this is not the only recent case that reflects this trend.  Two CAFC cases decided in late 2007 speak to this trend.

In In Re Comiskey (499 F.3d 1365, 2007), the CAFC concurred that Comiskey’s proposed patent – a “method for mandatory arbitration” between parties – did not constitute proper subject matter for a patent, as it was purely a mental process without connection to any tangible process or machine. 

In In Re Nuijten (500 F.3d 1346, 2007), the CAFC rejected a patent application for an innovation that would allow a party to “watermark” a radio signal with an additional signal that was imperceptible to the recipient of the signal, but which could be analyzed by appropriate receiving software.  The CAFC found that the signal on its own was not suitable as a subject for patent, as the signal by itself did not have a sufficient connection to a tangible item.

There remains a great deal of controversy over these two cases - not so much that the cases as decided were right or wrong, but that the cases have contributed to greater inconsistency among existing CAFC decisions on the topic of subject matter patentability.  It seems more and more likely that at some point, the Supreme Court will need to weigh in to resolve the existing contradictions in case law on the “subject” of subject matter patentability.

For an excellent overview of the the Comiskey and Nuijten cases, take a look at http://www.mofo.com/news/updates/files/13227.html.