Computer-Related Inventions
12. October 09
Until recently, the USA has taken a much more liberal approach to granting patent rights for computer-related inventions than the EPO.
A landmark decision was re Bilski. US courts are now applying re Bilski in new cases, namely the Biski machine-or-transformation test has been used to invalidate a method claim that
included the aid of a computer. In Dealertrack, Inc. v. Huber, et al., Doc. No. 06-2335 (C.D. Cal. 2009), the plaintiff asserted that U.S. Patent
no. US 7, 181, 427 was infringed by the defendant.
Claim 1 of the patent US 7, 181, 427 patent states:
1. A computer aided method of managing a credit application, the method comprising
the steps of:
receiving credit application data from a remote application entry and display
device;
selectively forwarding the credit application data to remote funding source terminal
devices;
forwarding funding decision data from at least one of the remote funding source
terminal devices to the remote application entry and display device;
wherein the selectively forwarding the credit application data step further comprises:
sending at least a portion of a credit application to more than one of said remote
funding sources substantially at the same time;
sending at least a portion of a credit application to more than one of said remote
funding sources sequentially until a finding source returns a positive funding
decision; sending at least a portion of a credit application to a first one of
said remote funding sources, and then, after a predetermined time, sending to
at least one other remote funding source, until one of the finding sources returns
a positive funding decision or until all funding sources have been exhausted;
or;
sending the credit application from a first remote funding source to a second
remote finding source if the first funding source declines to approve the credit
application.
The claim is a “computer-aided method”, namely that the technical intervention
of a computer is employed to implement the method The court ruled that the computer
does not include hardware or a database that is specially programmed to perform
the claimed method, but instead described the claim-related machines as “any device,
e.g., personal computer or dumb terminal.” This was a part of the court’s claim
construction ruling issued over a year before. The court cited a growing number
of district courts and Board of Patent Appeals and Interferences (BPAI) decisions
that are ruling against patent owners and applicants on this issue.
The trend in the USA regarding computer-related inventions is now beginning to
converge more in a direction adopted by the EPO, but it will most probably take
many years of such convergence before practice in the USA is any form of harmony
with that of the EPO.
October 12, 2009
Timothy Norris
