INCREASING THE POTENTIAL PATENTABILITY OF A COMPUTERIZED METHOD OF ANALYZING DATA

Obtaining patent protection for using a computer to gather and analyze data continues to be a challenge - but not impossible.

A recent Federal Circuit decision demonstrates the challenge and explains what can overcome the challenge.

Killian filed a patent application for determining eligibility for Social Security Disability benefits by using a computer. The court explained the invention as 1) looking up information from federal and state databases. Based on patients in the state database which identifies patients as meeting certain criteria but not receiving Social Security Disability benefits, the invention determines if a patient is entitled to such benefits.

Importantly, in the court's view, the patent application states that the invention "frees up assigned staff to perform more traditional duties."

The court explained the prior Supreme Court decisions in Alice and Mayo which determined whether an invention was patent ineligible.

Under Alice and Mayo, Killian's invention was a mental process that constituted an abstract idea - which is patent ineligible. The court noted that "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes with the abstract-idea category." Killian's method, according to the court, involved "mental tasks humans routinely do."

Further, according to the court, Killian's method steps "are directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner." "As the application's specification suggests, nothing technical exists in the nature of these steps; they could be performed by a person reading and comprehending the meaning of the recited information."

Importantly, according to the court, Killian's patent claims "do not detail how the computer should go about determining eligibility for benefits, beyond saying that the computer should determine eligibility based 'on the identified information' and 'current SSDI benefit legal requirements. . . . That is, the claims require comparing information against eligibility requirements - the same process that humans seeking to determine benefit eligibility must follow either with or without a computer."

COMMENT: The court seems to indicate that analyzing data by a computer can be patentable. But the patent claims need to go beyond general, broad descriptions of gathering and analyzing data. Specific analyzing steps - that are new and non-obvious - should be included in the claims to increase the likelihood of patentability.