The Federal Circuit invalidated several computer-based patent claims, holding that methods for administering and tracking life insurance policies were not patentable subject matter under 35 U.S.C. § 101. The court found that if computer limitations are not integral to the invention and do not involve a very specific application, and the computer is essentially replacing a mental process, then the claims lack patentable subject matter. Here, the management of life insurance policies, not the computer components, were integral to the claims. As the computer was not playing a significant part and lacked a specific application, the patents were invalid for claiming unpatentable subject matter.

1. July 31, 2012 Federal Circuit Invalidates Computer-Based Patent Claims
Intellectual Property Client Alert
On July 26, the Federal Circuit held in Bancorp v. Sun Life that computer-based patents are
This Alert provides only invalid for lacking patentable subject matter under 35 U.S.C. § 101. The Court held that if
general information and
computer limitations are not “integral to the claimed invention” or drawn to “a very specific
application of the inventive concept,” then methods for administering and tracking the value of
should not be relied upon as life insurance policies are not patentable. Specifically, if the claim merely involves a computer
legal advice. This Alert may doing calculations more efficiently than could be done by mental processes, then the claim is
be considered attorney not patentable.
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As with many of these cases, the issue is whether a computer is actually required. The Court
bar rules in certain held that held that the presence of a computer could be treated as “equivalent to an abstract
jurisdictions. mental process for purposes of patent eligibility.”
In taking a historical perspective, Judge Lourie (writing for the Court) linked the definition of
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“computer” to “a person employed to make calculations.” The Court used this perspective to
your Patton Boggs LLP demonstrate “the interchangeability of certain mental processes and basic digital
attorney or the authors listed computation.” Thus, to distinguish a person from a computer based invention through the
below.
“integral” requirement, the computer must facilitate the “process in a way that a person
making calculations or computations could not.”
Kevin M. Bell
kbell@pattonboggs.com
To this point, the Court stated, “[i]t is the management of the life insurance policy that is
‘integral to each of Bancorp’s claims at issue,’ not the computer machinery that may be used
B. Dell Chism to accomplish it.” The computer does not “play a ‘significant part’ in the performance of the
dchism@pattonboggs.com claimed invention,” and lacks “a very specific application” of the inventive concept.
Consequently the patents were held invalid for claiming unpatentable subject matter under 35
U.S.C. § 101.
WWW.PATTONBOGGS.COM
A copy of the decision in Bancorp v. Sun Life, No. 2011-1467, is available here.
This Alert provides only general information and should not be relied upon as legal advice. This Alert may also be considered
attorney advertising under court and bar rules in certain jurisdictions.
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