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Determining when software is unpatentable


By
Smith & Hopen PA

Some of the key cases and snippets to consider when drafting software patent claims.

  • Abstract Idea Dressed up with a Computer: A claim, properly construed, must incorporate enough meaningful limitations to ensure that what is claimed is more than just an abstract idea and is not a mere “drafting effort designed to monopolize [an abstract idea] itself.”  Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1297 (2012).
  • Machine Involved Must Play a Significant Role:  In order for a machine to impose a meaningful limitation on the scope of a method claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly. SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
  • Repetitive Calculations by a Computer is Nothing New:  Claims that recite a method of doing business on a computer, and do no more than merely recite the use of the computer for its ordinary function of performing repetitive calculations, are not patent eligible. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278-79 (Fed. Cir. 2012) (computer used for its most basic function, the performance of repetitive calculation, does not impose a meaningful claim limitation).





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