Our work here is (never) done: Patent eligibility

The United States intellectual property appellate court, i.e., the Federal Circuit Court of Appeals, is dedicated to defining patentable subject matter for computer processes and business methods. Unfortunately there remains is a kind of no-man’s land in which claim sentences could be construed as either (i) non-patent eligible abstract ideas or (ii) patentable applications of abstract ideas. Two examples of this borderline area are recent federal appellate court decisions, Cybersource v. Retail Decisions and Ultramercial LLC et al v. Hulu, Inc. et al. Each case was decided by a different three-judge panel, and each panel adopted a different analysis to determine whether a claim sentence comprised an abstract idea or a practical application thereof. In Cybersource the claimed method was detecting fraudulent credit card transfer on the internet, while in Ultramercial, the claimed process included consumer internet access to on- line advertisements.

The Cybersource judges concluded that a method to determine fraud on the internet was not patentable subject matter. In so concluding the judges found that internet and computer terminology within the claim sentences was not the critical criterion. Instead, the judges analyzed the underlying subject matter of the claim and found that it comprised mental steps; that is, a process done with pencil and paper and not necessarily a computer. The court also found that the claim sentence included all kinds of non-patentable subject matter processes. It therefore purported to cover processes there were abstract ideas and consequently not patent eligible.

The Cybersource judges also concluded that a process performed by a computer does not necessarily result in a patent eligibility. Furthermore, a computer driven data gathering step in a claim sentence does not rehabilitate otherwise non-patentable subject matter. However, in Ultramercial different appellate judges concluded that process and machine claims were patent eligible subject matter if they include internet and computer terms. This was particularly true if the claim sentence was dominated by a computer process and internet interface.

The Ultramercial judges did not analyze underlying subject matter of these claims, whether there were machine driven data gathering steps, or whether a computer was necessary. They concluded that if a computer is specifically programmed for an advertising internet process, then the computer is patent-eligible subject matter. They also observed that a method for monetizing advertising generally was an abstract idea, but that the application of monetization with a necessary internet computer interface was patent eligible.

My recommendation under these circumstances is that the patent application should include two kinds of claims for computer and business method processes and machines. The first set of claims should be drafted so that computer implementation is absolutely necessary to transact the process or method. For example, if there is manipulation of pixels and a halftoned digital image, the method by its terms cannot be performed entirely by mental steps. The second set of claims can be drafted to refer to internet and computer language generally, in the event that the case is reviewed by judges who adopt the Ultramercial analysis.

© 2011Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com or linked in sites.

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