Patenting a Computer Implemented Invention

IMG_0169 - rotatedFor a number of years, many US patents relating to computer implemented inventions and the internet were granted.  Then, on June 19, 2014, the U.S. Supreme Court issued its unanimous decision in Alice Corp. v. CLS Bank International.  It had long been established that one cannot patent an “abstract idea”, but for many years, it was possible to obtain a patent for a business method (essentially an abstract idea) as implemented on a computer.  However, in Alice Corp., the U.S. Supreme Court held that merely implementing an abstract idea on a “generic computer” does not make it patent eligible.  The Court further held that claims describing implementation of a method “using a handful of generic computer components” are not patentable either. The Alice Corp. decision severely weakened, if not destroyed, any business method patent that claims a demonstrably old and fundamental method with nothing more specific or “innovative” in the claims than implementation of that method on a computer.  A series of cases then followed in which the Alice Corp.  decision was applied. For example, in Ultramercial Inc v Hulu LLC, a claimed method of offering free streaming video in exchange for viewing an advertisement was held to be not patent eligible.  A year has passed since the Alice Corp. decision and it is now time to revisit what is and is not patentable regarding computer implemented inventions.   The U.S. Patent Office acknowledges that a general purpose computer, when programmed by program software to perform a series of steps, creates a new machine because a general purpose computer becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from the program software. In order for a claim to be patent eligible, it must clearly convey that the computer is programmed to perform the steps of the method.  There must be integral use of the computer to achieve performance of the method, as compared to the computer being merely being an object on which the method operates.  The computer must impose meaningful limits on the execution of the claimed method steps, as compared to the computer contributing only nominally to the execution of the method steps (e.g., in a data gathering).  By following the method claimed, one should produce an observable and verifiable result.    The foregoing can be used as a guide in determining whether a computer implemented invention is patent eligible.  It is important to understand that what is being considered is the invention “as claimed” (the claims are the part of a patent application that define the exclusive rights that the applicant hopes to obtain) and that care should be taken in the claiming strategy.  When preparing an application for subject matter that could be characterized as a mere abstract idea, it is important to emphasize in the claims, and fully describe, features that differentiate the claimed subject matter from a mere abstract idea, for example, specific technical details that are only possible or practical when implemented on a computer.