Freeman-Walter-Abele Test

Freeman-Walter-Abele is an outdated judicial test in United States patent law. It came from decisions concerning software patents. It was used to determine if mathematical principles or algorithms were patentable subject matter. The Court of Customs and Patent Appeals introduced and refined these test under the constraint that the U.S. Supreme Court found algorithms unpatentable. The aim was to allow claims that do not attempt to monopolize traditionally unpatentable subject matter, such as, mathematics, thinking, and laws of nature. Though primarily concerned with mathematical algorithms the test has some applicability in all subject matter discussions. Its use faded between 1992 and 1999 and was dead by 2008. See In re Freeman, 573 F.2d 1237 (C.C.P.A. 1978);[1] In re Walter, 618 F.2d 758 (C.C.P.A. 1980);[2] In re Abele, 684 F.2d 902 (C.C.P.A. 1982) [3]

Development from Freeman test

Freeman test: "It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps." In Freeman this was a controlling computer. These physical elements were seen as part of apparatus claims while refinements and limits were to be present in process steps. With Walter the test was modified to be consistent with Benson and Flook “no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm.”[4] Finally the test was defined in Abele algorithms “applied in any manner to physical elements or process steps” were patentable. However, caveats that field of use or non essential post processing activity remained.

Final Freeman-Walter-Abele test

The final test has two parts. First, determining whether the claim recites an algorithm within the meaning of Benson. Second, determining whether the algorithm is “applied in any manner to physical elements or process steps” per In re Abele.

Decline

This test was largely done away with by the Court of Appeals for the Federal Circuit with In re Alappat [5] it was no longer necessary to include physical elements in the invention the presence of programmed general-purpose computer was enough. However, the result became important. If mathematical algorithm produced "useful, concrete and tangible result" it was statutory subject matter. The test was further modified by the Federal Circuit Court in AT&T Corp. v. Excel Communications, Inc. and other similar cases to no longer require physical elements.[6][7][8]

The test was repudiated in State Street Bank described as having "little, if any, applicability to determining the presence of statutory Subject matter."[9] However, it continued to have use in the patent office who viewed it as much the same as the “practical application” and “useful, concrete and tangible results” tests. One noted issue with the test is that it dissects the claims into elements instead of analyzing the claims as a whole as required by Supreme Court precedent.

Death

The test appears dead with In re Bilski. It was noted that some patentable subject matter can fail the test.[10] The CAFC called the test inadequate. It voided the effect of the portions of decisions relying solely on the test. These include In re Abele, Meyer, In re Grams, and Arrhythmia Research Technology v. Corazonix Corp. However, some portions of those decisions survived Bilski, such as the portion of In re Abele concerning data representations of physical objects or substances.

See also

Notes

  1. ↑ "In re Freeman". Digital Law Online. Retrieved February 2014.
  2. ↑ "In re Walter". Digital Law Online. Retrieved February 2014.
  3. ↑ "In re Abele". Digital Law Online. Retrieved February 2014.
  4. ↑ In re Walter, 618 F.2d 758 (C.C.P.A. 1980); compare Diamond v. Diehr, 450 U.S. 175 (1981).
  5. ↑ In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)
  6. ↑ Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992)
  7. ↑ In re Lowry, 32 F.3d 1579 (C.C.P.A. 1994)
  8. ↑ AT & T Corp. v. Excel Communications Inc., 172 F.3d 1352 (Fed. Cir. 1999)
  9. ↑ State Street Bank & Trust Co. v. Signature Financial Group, Inc., 47 U.S.P.Q.2nd 1696 (Fed. Cir. 1998)
  10. ↑ In re Bilski at page 19 citing In re Grams 888 F.2d 835, 838-39 (Fed. Cir. 1989).