Those looking to wittle away at the patentability of software patents, a recent decision by the Court of Appeals for the Federal Circuit (CAFC), Bancorp Services v. Sun Life states that,

To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not…. The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.

Other courts are also beginning to quote similar language in their decisions.  This standard regarding the “machine” appears to be a lot more restricting than the machine-or-transformation test which the Supreme Court in Bilski v Kappos found to be a “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.”  It is not clear whether this more restricting standard will become the new standard for patentable subject matter for computer implemented processes.  However, it’s worth considering what computer-based processes, if any, meet this standard in a patent application.

This language appears to imply that speed or efficiency of a computer over a human is insufficient when the tasks being performed are “repetitive calculations.”  So when is a computer facilitating a claimed process in a way that a person making calculations or computations could not? Apparently, when these calculations are not repetitive.  Of course, it is well known that computers are best at performing repetitive calculations.  I am not sure why the type of calculation being performed should matter for patentability.

Such a nebulous standard would be challenging for patent examiners at the Patent Office to apply. It is also a clear departure from the Supreme Court’s decision in Bilski.  It bears watching whether the Supreme Court will clarify the situation regarding computer-based inventions any time soon.

I’d love to hear other’s thoughts on the meaning of this language and the effect such a standard would have.  Does anyone have thoughts on how to write patents to make sure this standard is met?

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