Computer-Implemented Invention Patents

Step 1 (Mayo Step One)

• Is the claim directed to a process, machine, manufacture, or composition of matter? If yes, proceed to Step 2A
• If no, § 101 satisfied.

Step 2A Prong 1

• Does the claim recite an abstract idea? Abstract idea categories: (1) mathematical concepts (mathematical relationships; mathematical formulas; mathematical calculations; mathematical algorithms)
• (2) certain methods of organizing human activity (fundamental economic principles or practices; commercial or legal interactions; managing personal behavior or relationships)
• (3) mental processes (concepts performed in the human mind including observation; evaluation; judgment; opinion).

Step 2A Prong 2 — Practical Application

• Even if the claim recites an abstract idea, does it integrate the abstract idea into a practical application? Integration indicators: (a) improvement in the functioning of a computer or another technology — this is the Enfish principle
• (b) application to a particular machine that is integral to the claim
• (c) effecting a transformation of a particular article
• (d) applying an abstract idea in some other meaningful way beyond generally linking it to a technology environment.

Step 2B — Inventive Concept

• If no practical application under Prong 2, do the additional claim elements add significantly more? Individual elements: routine/conventional computer operations like storing, retrieving, outputting information typically do NOT add significantly more
• Unconventional combinations: even routine elements in an unconventional arrangement CAN add significantly more (Berkheimer v. HP, Fed. Cir. 2018: whether elements are well-understood is a question of FACT, not law).

Eligible

• Enfish (self-referential table that improved computer memory efficiency)
• McRO (specific rules-based process for animated lip sync that a human could not practically perform mentally)
• Core Wireless (specific user interface improvement improving mobile device display)

Ineligible

• Alice Corp v. CLS Bank (intermediated settlement on a computer)
• Electric Power Group (collecting and analyzing data from power grid)
• BSG Tech (applying relational model database to prior art method).

Article 52 Epc

• Programs for computers are excluded from patentability as such
• But 'as such' is the operative phrase — the EPO has substantially narrowed this exclusion

Comvik Decision (T 641/00)

• Established the framework for mixed technical/non-technical inventions
• A claim is not excluded if it has technical character
• Even if non-technical features are present, they can contribute to the claim's inventive step IF they serve a technical purpose

What Counts as Technical

• (1) improving computer security (preventing unauthorized access; detecting intrusions; encrypting data)
• (2) improving computer performance (faster processing; reduced memory use; optimized network communication)
• (3) improving physical devices controlled by software (medical devices; industrial automation; vehicle control systems)
• (4) data compression algorithms (reduce actual storage space or transmission bandwidth)
• (5) signal processing algorithms (process physical signals)

What is not Technical

• (1) purely economic/financial schemes
• (2) presentations of information solely for their cognitive content
• (3) mathematical algorithms with no technical application

Claim Format for EPO

• System + method + computer program product triple claims are standard
• The computer program product claim ('A computer program comprising instructions which, when executed by a processor, cause the processor to perform...') is fully patentable at EPO if the method it implements has technical character

Prosecution Tips

• Never characterize the problem to be solved in purely business/economic terms
• Always frame the problem in technical terms (improve processing efficiency; reduce network latency; prevent security attacks)
• The technical character requirement gives more latitude than Alice, but claims must consistently use technical framing.

System Claim

• 'A computing system comprising: at least one processor
• A memory storing instructions that, when executed by the at least one processor, cause the computing system to: [specific technical steps with technical terminology]'

(1) Use Technical Language for the Problem

• 'to reduce computational complexity from O(n²) to O(n log n)' rather than 'to enable faster analysis'
• 'to reduce network round-trips by implementing server-side state caching' rather than 'to improve user experience'

Broad Independent Claim

• Functional description of the technical improvement
• Capture the broadest non-abstract formulation

Intermediate Dependent Claims

• Specific algorithms
• Specific data structures
• Specific protocol interactions

Narrow Dependent Claims

• Specific implementation choices
• Specific parameter ranges

Specification Requirements

• Pseudocode or flowcharts showing the algorithm in detail
• Data structure diagrams
• Test data or benchmarks
• Comparison to prior art performance
• Description of specific machine interactions

Claim Drafting Mistakes to Avoid

• Claiming the RESULT without the TECHNICAL MEANS ('a method for improving customer satisfaction' vs. 'a method comprising specific technical steps')
• Using only business/economic language even in technical claims ('optimize revenue' rather than 'reduce processing latency')
• Claims that read as 'apply [abstract idea] on a computer' without specifying HOW the computer is used differently.

Key Test

• Does the claim relate to a method or apparatus that solves a technical problem using technical means to achieve a technical effect?: technical means = specific algorithm or data processing steps
• Technical problem = a problem in the technical field
• Technical effect = a tangible, measurable improvement in the technical field

Drafting for China

• Claims must explicitly name the processor, memory, or specific hardware
• Software steps must be tied to hardware
• Data fields in database claims should reference what type of data and why it solves a technical problem

Computer Programs

• Computer programs constitute 'things' that can be patented in Japan
• Programs = creation of technical ideas using natural laws as long as information processing by the software is concretely realized using hardware

Software Patent Eligibility

• Software must process concrete information using hardware
• The software must exploit the hardware in a technical way

Drafting for Japan

• Claims should describe the software in terms of what hardware functions it controls
• 'a computer program that causes a processor to execute the steps of' is acceptable

Korea — KIPO Approach

• Similar to Japan in requiring that information processing be performed using hardware
• Korean IP Office examination guidelines closely follow the EPO approach
• Claims must have technical character
• 'computer programs recorded on computer-readable media' are patentable

Patent Cooperation Treaty (PCT) Strategy

• Use EPO/USPTO-compatible claim format as the base
• Add Japan/China/Korea specific claim sets in national phase entry if needed
• The EPO technical character framing is generally the most universally acceptable baseline.