THE PATENTABILITY OF SOFTWARE AND MATHEMATICAL ALGORITHMS FOR
COMPUTATIONAL ELECTROMAGNETICS
Lee W. Henderson, Ph.D.
Knobbe, Martens, Olson & Bear LLP
620 Newport Center Drive
Newport Beach, California U.S.A., 92660
Introduction
In the U.S., software has been
patentable subject matter for many years.
Nevertheless, until’very recently, it was not
uncommon to hear engineers, and even some
patent attorneys, assert that software was
not patentable. The patentability of
mathematical algorithms in the U.S. is not so
clear cut, but recent changes in U.S. patent
law have expanded the scope of patentability
for mathematical algorithms. Many types of
mathematical algorithms that were
previously not patentable subject matter are
now patentable subject matter The full
impact of these changes is yet to be
determined, but the trend is clearly in favor
of the patentability of mathematical
algorithms.
In Europe, the expanding scope of
patentability for software and mathematical
algorithms is lagging the U.S. to some extent.
Until very recently, the patentability of
software in Europe was somewhat uncertain.
However, a recent decision by the Technical
Board of Appeal (TBA) appears to have
removed the uncertainty and clearly
established that computer software is
generally patentable subject matter in the
European Patent Ofice (EPO). The
patentability of a mathematical algorithm is
I
still uncertain.
In the United States
In the U.S., patent law comes from
the federal patent statutes and from the body
of court records produced by the federal
courts. The courts interpret the statutes,
and those interpretations become part of the
patent law.
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Computer programs, being
algorithms, are closely linked to
mathematical algorithms. In an earlier era,
the USPTO published guidelines that
attempted to limit the patentability of
computer programs. As the technology
progressed, the courts disagreed with the
USPTO and announced more expansive
principles formulated with computer
technology in mind.
With regards to mathematical
algorithms, a U.S. court recently held that a
mathematical algorithm is patentable so long
as it is applied to produce a usefbl, concrete
and tangible result. For example, a process
claim that includes various mathematical
formulae to analyze electrocardiograph
signals to determine a specified heart activity
is patentable subject matter. Here, the
mathematical algorithm is used to produce a
number that has a specific meaning-not a
mathematical abstraction.
A mathematical calculation to
produce a smooth waveform display also
constitutes a practical application of an
abstract idea (a mathematical algorithm,
formula, or calculation), because it produces
a useful, concrete and tangible result-the
smooth waveform.
The court adopted the ‘‘useful,
concrete and tangible result” as a way to
distinguish patentable algorithms from non-
patentable algorithms. In other words, if an
inventor uses the algorithm to solve some
real-world problem, then the algorithm is
patentable for that application, but an
inventor cannot patent the algorithm itself
and thereby lock it up for all uses.
 This does not mean that any
mathematical algorithm is automatically
patentable. It merely means that the
applicant is not barred at the threshold. The
applicant must still establish that the
aigorithm is novel (new) and that the
algorithm is not obvious in view of the prior
ari
Application to Electromagneticg
Based on this recent case law, it
appears that most engineering uses of
mathematics are patentable subject matter
because engineers tend to use the equations
to get tangible results that have some
relationship, even if it is only an
approximation, to the real world. Thus,
techniques like the moment method, FEM,
FDTD, GTD, UTD, etc., all appear to be
patentable subject matter so long as they are
applied to solving some real-world problem.
When the techniques are divorced from the
real-world problem, and abstracted into the
realm of pure mathematics, then it becomes
less clear whether they are patentable.
Matrix inversion seems to be a good
example of a mathematical algorithm that is
on the boundary between patentable and
non-patentable subject matter. To the
engineer. a new matrix inversion technique
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may be very useful. But without applying
the inversion technique to a specific
application, it is difficult to say whether the
court would consider the result to be
sufficiently tangible (non-abstract).
In the European Patent Ofice (EPO)
the situation is somewhat different. Like the
U.S., European patent law under the
European Patent Convention (EPC) is based
on statutes and court decisions. However,
the EPC statutes include a specific provision
that prohibits the patentability of computer
programs “as such.”
The meaning of the phrase “as such”
has historically caused considerable
confusion. In February of 1999, the EPC
Technical Board of Appeal (TAB) removed
much of that confusion by stating that “a
cornputer program claimed by itself is not
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excluded from patentability if the program,
when running on a computer or loaded into
a computer, brings about, or is capable of
bringing about, a technical effect which goes
beyond the ‘normal’ physical interactions
between the program (sofkware) and the
computer (hardware) on which it is run.”
The phrase “technical effect” used by
the European court is similar in many
respects to the phrase ‘‘useful, concrete and
tangible result” used by the U.S court
Thus, software algorithms that are
patentable subject matter in the U.S will
typically be patentable subject matter in
Europe as well. This does not imply,
however, that mathematical algorithms
which qualifjr as patentable subject matter in
the U.S. will also qualifL in Europe. The
TAB decision applies only to computer
software.
Conclusion
The scope of patentable subject
matter, especially with regard to software
I and mathematical algorithms, is expanding
both in the U.S. and in the EPO. Inventors
wanting to obtain patent protection for their
mathematical algorithms or computer
software should not assume that such
protection is unavailable or even that they
know where the boundary lies It is a
mistake, and it can be a costly mistake, to
presuppose that something is unpatentable
simply because it is a mathematical algorithm.
Lee Henderson is an attorney with
Knobbe, Martens, Olson & Bear, L.L.P., at
620 Newport Center Drive, Newport Beach
CA. He is admitted to the bars of the state
of California and the U.S. District Court for
the Central District of California. He is
registered to practice before the U.S. Patent
and Trademark Office. This article is
provided for the sole purpose of presenting
general information and does not contain
legal advice. Opinions expressed in this
article reflect the opinions of the author, and
not necessarily those of Knobbe, Martens,
Olson, & Bear.
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