Therefore, for software patents, the first step is to determine whether you have an abstract idea. An abstract idea includes a fundamental truth, an original cause, a motive, a mathematical formula or a fundamental economic practice. If the idea is abstract, then the hardware components and other limitations recited by the claims are considered to determine if there is anything new to the invention. If all that is left is a general-purpose computer, with memory, processors, controllers, etc., then the mere presence of the computer does not make the abstract idea patentable. The real question is: Looking at the claim as a whole or in the individual steps, is there something new? Some things to consider are: 1) whether the functioning of the computer itself is improved, (2) whether there are any improvements in any other technology or technological field, or 3) whether there is specific hardware separate from what a general computer would have? It appears that the novelty question can be affirmative if there is anything new about the claimed method or hardware.
The example of the Court of what is patent-eligible is instructive. The Court looked to Diehr, in which a computer-implemented process for curing rubber was patent-eligible not because the claims were implemented on a computer, but because they improved an existing technological process. Namely, the Diehr invention used a recorded temperature measurement inside a rubber mold, something the industry had not been able to do previously. Even though a thermocouple to obtain temperature was known, and the mathematical equation used to determine the cure time was well known, the industry had never put the two together. Therefore, the presence of the thermocouple to obtain a real-time temperature measurement was sufficiently novel to transform the abstract idea into patentable subject matter.
"In short, [if] each step does no more than require a generic computer to perform generic computer functions," then the abstract idea does not become patentable.
Result on prosecution
Although the Court used a novelty type of approach for determining subject matter eligibility, that approach is not articulated in the same way as the separate novelty requirement under Sect. 102 is generally understood. To determine novelty under Sect. 102, an examiner must make a search of each limitation of the claim and find it expressly or inherently in a single location. The examiner is generally not permitted to reduce the invention down to its gist. However, the question of subject matter novelty under Sect. 101 appears to require just that: Take the invention down to the gist and then determine if there is anything new.
It is likely that examiners will use this general approach to start rejecting software patents out of hand without much analysis or basis for the rejection. This will require additional cost to argue and persuade the examiner, and essentially shifts the burden to the patentee to show that there is a point of novelty in the claim, versus the burden on the examiner to prove the absence of novelty by specifically identifying each limitation within a reference. However, if the patentee can show an improvement or novelty in the program itself or the hardware associated with the program, the patentee should prevail.
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