In this ealier posting on the America Invents Act we reported on the new Covered Business Methods Review (faqinfo) which allows to challenge any business method patent before the Patent Trial and Appeal Board (PTAB) as soon as it is enforced against an accused infringer.

From a European perspective, this new proceedings seems particularly interesting as the question as to whether or not a claim falls under the CBM review is answered by 37 CFR § 42.301 as follows:

(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

This definition is surprisingly similar to what European case law (and German case law) has developed to define “methods for [...] doing business [...] and programs for computers as such” according to Art. 52 (2), (3) EPC (and § 1 (3), (4) PatG). Even further, the requirement of a “technological feature that is novel and unobvious” seems to correspond to the well-established Comvik approach (cf. T 641/00, 2002) of the EPO Boards of Appeal, according to which non-technical features cannot contribute to novelty and inventive step.

The first case under a CBM review was SAP America, Inc. v. Versata Development Group, Inc. based on US 6,553,350, covering claims relating to ”pricing products in multi-level product and organizational groups“. In its decision of Januar 9, 2013 the PTAB argued that the subject-matter of challenged claims 17 and 26 to 29 does not relate to a technological invention, as theses claims

[require] no specific, unconventional software, computer equipment, tools or processing capabilities [so that] invention may be implemented in any type of computer system or programming or processing environment.

From a European point of view and before the background of Comvic-related case law, this may be understood in the sense  that theses claims do not exhibit a further technical effect beyond the mere usage of computer equipment which would be required to provide a technical solution and patent-eligibility under Art. 52 EPC. At this point the patent would ave been already revoked in Europe, e.g. in opposition proceedings before the EPO. In the US, however, this “non-technological invention test” only is a prerequisite for the “real” patent-eligibility assessment as to whether or not the claim relates to an abstract idea only.

In the final written decision of June 11, 2013 the PTAB decided that the challenged claims are unpatentably abstract (see also here). On pages 25, 26 the decision recaps the known guidance:

To be patentable, a claim must do more than simply state the law of nature or abstract idea and add the words “apply it”. Yet, an application of a law of nature or abstract idea to a known structure or process may be deserving of patent protection. The key question is, therefore, whether the claims do significantly more than simply describe the law of nature or abstract idea.

Particularly with respect to the old Gottschalk v Benson ruling, the decision seems to stress that an abstract idea, e.g. a mathematical method (algorithm), requires “a substantial practical application except in connection with a digital computer” to be patentable.

This again appears conform with the European perspective that a “further technical effect” requires something beyond the normal physical and electrical effects common to all programs executed on a general-purpose computer; see e.g. T 1173/97T 163/85.

As to the concrete claims under challenge, the PTAB concluded on pages 28 to 33 basically that these claims

  • have no substantial practical application except in connection with a computer,
  • are implemented by general-purpose computer hardware and programming,
  • merely add insignificant, conventional and routine steps that are implicit in the abstract idea itself.

Consequently, claims 17 and 26 to 29 were held unpatentable under 35 U.S.C. §101 as they merely recite unpatentable abstract ideas without providing enough significant meaningful limitations to transform these abstract ideas into patent-eligible applications of these abstractions.

Conclusion. As this outcome would be perfectly justified also before the background of European patent law, the difference between a non-technological invention and an abstract idea remains somewhat unclear to me, as both issues were decided by basically pointing to the fact that the challenged claims do not go beyond an unspecific general-purpose computer environment.

According to 37 CFR § 42.301, claims are only admitted for review under the CBM program if they do not comprise a “technological feature that is novel and unobvious over the prior art”. Thus, from a logical point of view, this appears to imply that a non-technological claim covered by 37 CFR § 42.301 may only be rendered patentably non-abstract by substance not lying in any field of technology.

This almost inevitably means that a patent can be granted in the US exclusively based on novel and unobvious non-technological features, i.e. on pure mathematical, computational, or business-related progress. Doesn’t the cat catch its tail here as exactly this is excluded by pertinent US case law?

Therefore, at least for me, the question arises, what is the difference between a non-technological and an abstract claim? And, from a different perspective, how can a non-technological invention be non-abstract and thus patentable?

Doesn’t a technological invention always imply non-abstractness and vice versa?

About The Author

Volker 'Falk' Metzler

European Patent Attorney, German 'Patentanwalt', European Trademark and Design Attorney, Computer Scientist, PhD, IP Blogger, Father of Two, Mountain Enthusiast

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