How does the use of a computer in a claim affect the “mere instructions to apply” analysis?
The use of a computer in a claim does not automatically make the claim eligible or ineligible. According to MPEP 2106.05(f), the key consideration is how the computer is used in the claim:
“Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.”
Here are some important points to consider:
- Using a computer merely as a tool to perform an abstract idea is generally not enough to make a claim eligible.
- Claiming improved computer capabilities or improvements to an existing technology may integrate the exception into a practical application.
- The mere presence of a computer in the claim is not sufficient; the focus is on how the computer is used to implement the idea.
- Claiming the inherent speed or efficiency of a computer without more is typically not enough to provide an inventive concept.
For example, in Alice Corp. v. CLS Bank, the Supreme Court found that implementing an abstract idea on a generic computer did not make the claim patent-eligible. However, in cases where the computer is integral to the claimed invention and provides a specific improvement in computer capabilities, the claim may be eligible.
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