A Patent for your Thoughts

On the subject of lawyers thinking, the Court of Appeals for the Federal Circuit (CAFC) recently heard an appeal on the patentability of thought. In In re Comiskey, Stephen W. Comiskey, a lawyer, sought a patent on a business method he devised for resolving by arbitration disputes about the meaning of legal documents like wills, trusts and contracts. The Patent and Trademark Office (PTO) took the view that Comiskey's dispute resolution methodology was an unpatentable abstract idea. The disqualifying feature was that no aspect of the process existed or interacted with anything outside of Comiskey's brain. In particular, his claims impermissibly "encompass[ed] a method of controlling how humans interact with each other to resolve a dispute, based on a human arbitrator's perception of the dispute." On appeal, the CAFC affirmed, holding that patentable subject matter is a broad category, but not broad enough to make a human thought process patentable.

The CAFC noted, though, that some of Comiskey's claims involved a module which the court read as including a computer or other non-human data processor. A brain-generated analytical process can be patentable if it "is embodied in, operates on, transforms, or otherwise involves another class of [patentable subject matter], i.e., a machine. " The CAFC remanded so the PTO could consider whether the addition of a computer to human mental processing would merit a patent for his dispute resolution process, in particular, whether the application of a computer to Comiskey's dispute resolution process would have been non-obvious to a person of ordinary skill in the art.

The Supreme Court has long held that "a principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, for no one can claim in them an exclusive right. " Le Roy v. Tatham, 55 U.S. 156, 175 (1852). As the CAFC eloquently noted in Comiskey: "[I]t is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable." Despite Comiskey's efforts, pure thought is still free for the taking.