Federal Circuit: Reciting “Computer Readable Medium” Insufficient Transform for “Unpatentable Mental”

May 5, 2020

Introduction

Welcome to the blog of Richardson Law Firm PC, where we provide comprehensive and expert legal advice on various topics in the field of patent law. In this blog post, we will discuss the recent decision by the Federal Circuit regarding the insufficiency of reciting "computer readable medium" as a transformative process for inventions categorized as "unpatentable mental."

The Background

In recent years, intellectual property law has faced numerous challenges, particularly in the realm of patents related to software and computer-implemented inventions. One of the key issues that has arisen is the determination of whether certain inventions fall within the realm of patent eligibility, as defined by statutory laws and jurisprudence.

Understanding "Computer Readable Medium"

The term "computer readable medium" refers to a non-transitory storage medium that can store instructions in a format readable by a computer system. In patent applications, the inclusion of "computer readable medium" as part of the claim language has been a common practice, with inventors seeking to broadly cover their innovations.

However, recent court decisions, including the Federal Circuit's ruling, have raised concerns about the adequacy of including "computer readable medium" as a transformative process when dealing with inventions categorized as "unpatentable mental."

The Federal Circuit's Decision

In the case at hand, the Federal Circuit concluded that the mere recitation of "computer readable medium" without additional transformative steps is insufficient to satisfy the requirement of patent-eligible subject matter. The court held that while software-related inventions can be patentable, the inclusion of a generic "computer readable medium" does not provide the necessary transformation to make a mental process patentable.

This decision by the Federal Circuit is of significant importance to inventors and patent practitioners alike. It highlights the need for more than just a generic mention of "computer readable medium" in patent claims. Innovators must now demonstrate how their inventions go beyond a mental process and involve a transformative aspect that provides technical benefits or solves a specific technical problem.

Implications and Considerations

With the Federal Circuit's decision, it is essential for inventors, entrepreneurs, and businesses to reassess their patent strategies and ensure compliance with the current legal landscape. It is no longer sufficient to rely solely on the inclusion of "computer readable medium" in patent claims.

Instead, it is crucial to focus on the technical aspects of the invention and clearly demonstrate how the innovation goes beyond a mere mental process. This can include outlining specific technical improvements, detailing the interaction with hardware systems, or showing how the invention solves a technical problem that was previously unsolved.

Expert Legal Advice from Richardson Law Firm PC

At Richardson Law Firm PC, we understand the complexities of patent law and the challenges faced by inventors in this ever-evolving landscape. Our team of skilled attorneys specializes in patent law and can provide expert legal advice and representation tailored to your unique needs.

If you require assistance with patent eligibility issues, drafting patent claims, or navigating the intricacies of patent law, our experienced lawyers are here to help. Contact Richardson Law Firm PC today to schedule a consultation and explore your legal options.

Lori Sturgill
Interesting and informative decision.
Nov 10, 2023