Gottschalk v. Benson

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Gottschalk v. Benson (1972)

Syllabus

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Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection... have confused the issue further and should not be permitted."

4670902Gottschalk v. Benson — Syllabus1972

Court Documents

Opinion of the Court

Supreme Court of the United States

409 U.S. 63

Gottschalk, Acting Commissioner of Patents v. Benson et al.

Certiorari to the United States Court of Customs and Patent Appeals

No. 71-485. Argued: October 16, 1972 --- Decided: November 20, 1972

Respondents' method for converting numerical information from binary-coded decimal numbers into pure binary numbers, for use in programming conventional general-purpose digital computers is merely a series of mathematical calculations or mental steps and does not constitute a patentable "process" within the meaning of the Patent Act, 35 U.S.C. § 100 (b). Pp. 64-73.

58 C.C.P.A. (Pat.) 1134, 441 F.2d 682, reversed.

DOUGLAS, J., delivered the opinion of the Court, in which all Members joined except STEWART, BLACKMUN, and POWELL, JJ., who took no part in the consideration or decision of the case.

Richard B. Stone argued the cause for petitioner. With him on the briefs were Solicitor General Griswold, Assistant Attorney General Kauper, Acting Assistant Attorney General Comegys, Howard E. Shapiro, Richard H. Stern, and S. William Cochran.

Hugh B. Cox argued the cause for respondents. With him on the brief were Henry P. Sailer, Michael Boudin, William L. Keefauver, and Robert O. Nimtz.

Briefs of amici curiae urging reversal were filed by James M. Clabault and Edward G. Fiorito for Burroughs Corp.; by Henry L. Hanson and D.D. Allegretti for Honeywell, Inc.; by Lloyd N. Cutler, Ezekiel G. Stoddard, Deanne C. Siemer, Nicholas DeB. Katzenbach, and Elmer W. Galbi for International Business Machines Corp.; and by Donald J. Gavin for the Business Equipment Manufacturers Assn.

Briefs of amici curiae urging affirmance were filed by Sidney Neuman, Tom Arnold, and Jack C. Goldstein for the American Patent Law Assn.; by Claron N. White and Louis Robertson for the Chicago Bar Assn.; by James J. Hill and William E. Dominick for the Patent Law Association of Chicago; by Timothy L. Tilton for Iowa State University Research Foundation, Inc.; by Michael I. Rackman for Institutional Networks Corp.; by David J. Toomey for Whitlow Computer Systems, Inc.; by Virgil E. Woodcock, Richard E. Kurtz, and Oswald G. Hayes for Mobil Oil Corp.; by Morton C. Jacobs for the Association of Data Processing Service Organizations et al.; by Mr. Jacobs for Applied Data Research, Inc.; and by Howard J. Marsh for Computer Software Analysts, Inc., et al.