This paper opposes the IBM/PTO proposal to patent (as an article of manufacture) computer instruction fixed on computer readable media (so called media or Beauregard claims). The juridical issue raised is whether patents are limited to the utilitarian embodiment of inventions (the instructed machine) or may be extended to include mere symbolic expression (the machine instruction) fixed in a tangible medium. In Part I, the author argues (a) patenting symbolic expression breaches the intellectual property premise prohibiting property interests in mere abstract ideas, by avoiding both copyright merger and patent preemption doctrines, and (b) contrary to the PTO analysis, patents and copyrights are mutually exclusive statutory interests with no overlap in "abstract expression" subject matter. Part II, Intellectual Property Fundamentals: Can an Idea be Owned?, reviews the fundamentals, introduces a Cartesian perspective and concludes there is no property interest over mere abstract ideas or scientific principles; though abstract expressions of ideas are copyrightable and utilitarian embodiment of inventive conceptions are patentable. Part III, The Abstract Nature of Computer Science, explores the abstractions of computer science by reviewing the Turing machine, the theory of algorithms and the difference between digital and analog computation, and by comparing computer science ingenuity (abstract solutions to abstract problems) with natural science ingenuity (abstract solutions to concrete problems). Part IV, Computer Science and Intellectual Property Law, serves a dual purpose: primarily, it describes the judicial application of patent law to computer science; but it also contains our commentary on two issues, (a) is a utility limitation necessary and sufficient to patent mere mechanization of process computation, and (b) are mathematical algorithms analogous to scientific principles in patentability as well as preemption? A fundamental question arises in this discussion; that is, will the ingenuity of a computer scientist be given parity with the ingenuity of a natural scientist? Part V, Are Computer Programs on Media Patentable?, offers arguments on the issue the author initially set out to discuss. Finally, Part VI, Concluding Comments, offers closing remarks.
Allen B. Wagner, Patenting Computer Science: Are Computer Instruction Writings Patentable?, 17 J. Marshall J. Computer & Info. L. 5 (1998)