Barry Friedman, Attorney at Law

Barry Friedman


Posted on December 17, 2014

Recent court decisions have severely eroded the protectability of computer-implemented inventionsThese decisions essentially hold that the mere implementation of a mental or otherwise known process on a general purpose computer is not, in and of itself, patentable subject matter (whether novel or otherwise).

What is necessary to identify subject matter eligible for patenting are additional inventive features sufficient to transform an abstract idea or mental process beyond mere computer implementation.  Patentable subject matter may be found for claims including additional special-purpose hardware.  The courts are vague, however, in identifying those inventive features which would be sufficient to transform a general purpose computer, based solely upon its programming into a patentable system or process.  There are many historical negative examples of unpatentable processes, such as mathematical algorithms and fundamental economic practices.  There has not, until recently, been any corresponding positive guidance relating to what is patentable subject matter in this field.

The December 2014 decision in DDR Holdings, LLC. v., L.P., however, found certain computer-implemented claims to contain patentable subject matter.  This decision therefore provides some initial positive guidance as to the limits of patentable subject matter for computer-implemented inventions.

The DDR patent relates to the use of web pages which incorporate information from more than one source.  For example, a travel agency’s website might include a click-through advertisement from a cruise line.  Traditionally, clicking through the advertisement would land the customer on the cruise line website.  The travel agency, however, wants to keep the customer on its own website even if the cruise promotion is selected.  In summary, the DDR patent claims the creation of an intermediate composite web page which contains the advertising data from the cruise supplier, while maintaining the “look and feel” of the travel agency’s web site.  Thus, the travel agency retains “control” over the customer during review or selection of the cruise promotion.  The customer believes that he/she remains on the travel agency’s web site as well, because of the continuity of the “look and feel.”  The customer may then purchase products from the cruise line without actually entering the cruise line’s website.

The Court finds these claims to be patentable subject matter because they do not merely recite the performance of some business practice known from the pre-Internet world.  Instead, the claimed solution necessarily overcomes a problem specifically arising in the realm of computer networks.  The claimed invention overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.  The Court cautions, however, that not all claims purporting to address Internet-centric challenges are eligible for patent merely for that reason.

In our view, patent eligible subject matter in computer implemented devices, systems and methods should, for now, be evaluated in the following manner:

  • Is the operative aspect of the patent claim primarily a series of method steps or processor operations?  If the answer is “no” and the primary operative aspect of the claim is structural, then patentable subject matter is present.  If the answer is “yes,” proceed to the next step of the analysis.
  • Is the operative aspect of the patent claim directed to the specific operation of the computer or network itself?  If yes, then patentable subject matter is likely present.
  • If the operative steps or processor operations merely:
    • replicate or enable a mental process, i.e., can a human perform the steps (even if it were to take years) mentally or with “pen and paper;”
    • replicate or enable methods of human behavior or conventional financial, business or economic operations; or
    • identify conventional computer or network operations,

no patent eligible subject matter is likely to be found.

  • If the operative aspect of the patent claim is directed to an operation which does not replicate or enable a corresponding “real world” operation and is directed toward overcoming a problem arising as a function of the computer implementation itself, then patentable subject matter may be found.
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