The New ‘Pencil and Paper’ Test for Process Patentability

By Robert Ambrogi Esq

Remember those hopeful, pre-Bilski days when patent lawyers believed the Supreme Court would bring clarity to the law of business-process and software patents? Instead, the court’s June 2010 opinion left patent professionals longing for more precision. Although the court endorsed the Federal Circuit’s “machine-or-transformation” test for analyzing the patentability of a process under § 101 of the Patent Act, it rejected that as the only test. Even then, it failed to say what other tests should be employed, short of emphasizing the broad rule that a process cannot be patented if it is purely an “abstract idea.”

In practical effect, Bilski punted back to the Federal Circuit to provide the specifics that the Supreme Court left out. Recently, the Federal Circuit had an opportunity to do just that. In an Aug. 16 opinion, CyberSource Corp. v. Retail Decisions Inc., the court ruled that a method for verifying the validity of credit-card transactions over the Internet is not patentable. In so doing, the Federal Circuit supplemented its somewhat technical machine-or-transformation test with a decidedly non-technical one – the “pencil and paper” test.

The ruling hinged on the court’s conclusion that the process at issue was one that could be performed by the human mind. Citing two Supreme Court cases from the 1970s, the court said that “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas.” In the context of computer applications, if the same outcome could be achieved using “pencil and paper,” then it is a mental process and therefore not a patentable one, the court said.

At issue in the case was a method used to verify credit card transactions by comparing information about a card user’s Internet address (IP address, email address, etc.) with other Internet addresses that have been used in connection with the same card. (This was claim 3 of the patent). Concluding that all of the claimed patent’s steps “can be performed in the human mind, or by a human using a pen and paper,” the court held that it is not patentable. “Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101,” the court said.

For the same reason, the court struck down a second claim of the patent (claim 2), a so-called Beauregard claim – named for a 1995 Federal Circuit decision – that relates to computer-readable medium containing program instructions for a computer to perform a particular process. The mere fact that CyberSource coupled its unpatentable mental process with a machine-readable medium does not, of itself, change the outcome, the court said.

“The basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium,” the court reasoned. “Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.”

So we’re clear now, right? Whether characterized as a process claim or as a Beauregard claim, if the process can be performed using pencil and paper, it is essentially a mental process and cannot be patented, the court seemed to hold.

But wait. Just as the court was about to wrap up its opinion, it tossed in a zinger – one of those seemingly innocuous, almost throw-away lines that could easily precipitate a whole new wave of legal uncertainty and litigation. Here it is: “This is entirely unlike cases where, as a practical matter, the use of a computer is required to perform the claimed method.”

So, the mere fact that a claim requires a computer to perform the method does not make it patentable, the court is telling us, unless, as a practical matter, the use of a computer is required to perform the method.

Confused? What the court appears to be saying is that the outcome is determined by the complexity of the operation. As an example, it cites its only other post-Bilski business method case, Research Corp. Techs. v. Microsoft Corp., which upheld the patentability of a method “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.”

“Because the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), the method could not, as a practical matter, be performed entirely in a human's mind,” the court reasoned. By contrast, the CyberSource process was clearly something that “one could mentally perform.”

All of which leaves us begging the question: Whose mind will be the standard that defines the processes one could mentally perform? Is there a “reasonable brain” rule on the horizon? I guess we’ll have to wait for another round of business-method  appeals to learn that answer.

Tell us: Do you think mental processes performed by a computer should not be patentable, as the Federal Circuit ruled?

Robert Ambrogi Esq

Robert Ambrogi Esq

We are proud to partner with an author of Bob’s caliber to provide exclusive articles for our legal clients and leading industry experts. Robert J. Ambrogi is a news media veteran and the only person ever to hold the top editorial positions at the two leading national U.S. legal newspapers, the National Law Journal and Lawyers Weekly USA. He is currently a Massachusetts lawyer who represents clients at the intersection of law, media and technology. He is also internationally known for his writing and blogging about the Internet and technology. Media and Technology Law Bob represents a range of businesses and individuals, concentrating in print and electronic media companies and the editorial, sales, marketing and technology professionals who work in them. He also counsels businesses and individuals in employment matters. Arbitration and Mediation An established professional in alternative dispute resolution, Bob has been an arbitrator since 1994, focusing on labor and employment and securities disputes. A mediator in a range of civil disputes, Bob completed the training required by Massachusetts law to protect confidentiality.

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