No Patent Protection For Programmed Computer Method

Summary: In Ex Parte Halligan, the BPAI held that a method using a programmed computer does not transform a method that is ineligible for patent protection patent eligible. The computer limitation is a field of use limitation and does not add any meaningful limitation to the claims.

Basic Background: During examination of a non provisional patent application, an examiner reviews the application to determine whether the claims are directed to subject matter that can be patented (i.e., eligible for patent protection). If the claims are directed to subject matter ineligible for patent protection, then the examiner will reject the claims.

35 USC Section 101 defines the types of subject matter eligible for patent protection. This section states that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Only inventions directed to the four types of subject matter (i.e., process, machine, manufacture, or composition of matter) are eligible for patent protection.

Ex Parte Halligan: Recently, the Federal Circuit which is the appeals court for all patent matters explained in In Re Bilski (Fed. Cir. 2008) the types of process claims eligible for patent protection. The patent appeals court stated that only processes that pass the “machine or transformation” test are eligible for patent protection.

Ex Parte Halligan (BPAI 2008) is an appeal from an examiner’s rejection of process Claim 119 as being subject matter ineligible for patent protection. Claim 119 is directed to a “programmed computer method” implemented using an unspecified algorithm. The Applicant filed an appeal with the Board of Patent Appeals and Interferences (BPAI) which is the administrative appeals board for patent matters within the Patent Office.

The BPAI analyzed whether the programmed computer method is eligible for patent protection under the machine or transformation test as interpreted by the Federal Circuit in In Re Bilski. The BPAI held that process Claim 119 is not eligible for patent protection even though it was tied to a computer (i.e., machine) because merely tying the method to a computer did not impose meaningful limits on the claim’s scope to impart patent eligibility. The “programmed computer” limitation is a field of use limitation insufficient to render an otherwise ineligible process claim patent eligible.

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James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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