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ON THE SOFTWARE PATENTING CONTROVERSY 791

The quoted analysis also acknowledges that “[l]egis- point of becoming situationally specific, that may be
lative history indicates that Congress contemplated a sign that the work has risen to a level that warrants
that the subject matter provisions be given a broad patent protection. For example, the use of an estab-
construction and were intended to ‘include anything lished scientific principle (which might be described
under the sun that is made by man’” (9). by a mathematical formula), such as Boyle’s Law or
In some cases, algorithms have been thrown Ohm’s Law (both defined in (11)), even if described
into the same category as mathematical formu- in an algorithm that is more detailed than the math-
las, as in Diamond v. Diehr, which produced this ematical formula, likely would not warrant patent
rather controversial opinion: “[A]n algorithm, or protection, but by adapting such a scientific prin-
mathematical formula, is like a law of nature, which ciple to a specific situation in a fashion that results
cannot be the subject of a patent.” This seemed to in being able to accomplish a useful result not pre-
be a result of the belief held by some judges that viously achieved through that established scientific
everything that can be precisely defined is somehow insight, it might rise to a level of innovation that
equivalent to a mathematical formula (its definition) warrants patent protection even if that innovation
and — therefore — unpatentable; this view has also is described using a algorithm.
been advocated by Ben Klemens (10). One could extrapolate the situation in Alice
Equating algorithms with mathematical formulas Corp v. CLS Bank International along these lines.
is difficult to justify. For example, try to find a math- According to Nazer and Ranieri, Alice Corp.’s pat-
ematical formula for the function f computed by this ent simply claimed a form a escrowing — called an
Java code: intermediate settlement — that was well-known (4).
public static int Their patent simply implemented this known art and
f(int n) method into software instructions, but it did not
{ accomplish something that was either new, more
if (n<=1) return 1;
if (n%2==0) accurate, or provided some otherwise novel capa-
return (f(n/2) + 1); bility; it just did what was already known, but did
else return (f(3*n + 1) +1); it through the use of a computer. Use of a computer
};
does in itself provide some benefits — it might be
For some seven decades now, mathematicians and faster or more consistent, etc., but those benefits
computer scientists have not been able to figure out results from the nature of the computer and not from
if this program halts for every integer n or not. This the nature of the process of intermediate settlement.
illustrates that software code and algorithms do not Until the courts adopt some specific guidance,
always correspond in a simple and obvious fashion. whether along the lines of that which we indicate
Not all courts subscribed to this idea. For instance, above or something else, it remains unclear what is
Justice Stone wrote for the U.S. Supreme Court in a patentable matter in the court’s interpretation of
Mackay Radio & Telegraph Co. v. Radio Corp. of the patent law.
America: “While a scientific truth, or the mathemat-
ical expression of it, is not a patentable invention, a ECONOMIC ARGUMENTS
novel and useful structure created with the aid and The economic argument for patent protection
knowledge of scientific truth may be.” of software parallels that for intellectual property
As noted above, when we provided definitions, a in general: Innovation is good for society, so it is
mathematical formula is a more abstract statement appropriate for the government to take actions that
than an algorithm; a formula can be considered a gen- promote such innovation. In the U.S., patents are
eral fact or statement, whereas an algorithm has the one of the cardinal approaches for providing such
potential to be far more situationally specific. This is, promotion of innovation, attempting to create an
in our view, a critical opportunity to achieve a defi- economic incentive by granting a period of monop-
nition of patentability: When an algorithm (and the oly to the inventor. As noted above, the authority to
software code that implements it) is elaborated to the do so actually resides in the U.S. Constitution.