02 July 2013

Two interesting Decisions on Patent Eligibility of Software Inventions in the US

On the ksnh::law blog, two postings were recently published that comment on interesting decisions of US courts with respect to patent eligibility of software inventions under 35 U.S.C. § 101.

The posting "US Patent revoked as being non-technological and unpatentably abstract – But what is the Difference?" comments on the SAP v. Versata case decided by the Patent Trial and Appeal Board under the Covered Business Methods review program, while the posting "Business Method patentable as Claims show technological Advance – How would Europe decide?" relates to the Federal Cicuit's decision in the case Ultramerical v. Hulu.

Both cases relate to - from a European perspective pure - business method patents but with very different outcome. While the PTAB found that Versata's patent US 6,553,350 relates to an abstract idea as the claims can be implemented on a general-purpose computer hardware by merely adding insignificant, conventional and routine steps implicit in the abstract idea itself, the CAFC found Ultramerical's patent US 7,346,545 eligible since many of the claimed steps require intricate and complex computer programming which transforms a general-purpose into a special-purpose computer performing particular functions.

The diverging decisions both refer to something like the "technical character" or "technical implementation" of the claimed business principle. The respective grounds are very interesting as they seem to converge towards the European view on patent eligibility based on the notion of "technicality". Before the background of European patent law, however, it's safe to say that neither of the two patents would have survived, as their technical features are so trivial that they are notoriously known and cannot establish novelty and inventive step.