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[Retarius]

I have been approached by an inventor who wants to obtain a patent for his invention.  The invention is a process for determining whether a product incorporating hardware and software should be released for volume production - therefore, the output is basically a yes/no decision on release.  The decision is based on review of a collection of various testing and time metrics - which could be process steps expressed as an algorithm.

It sounds to me the output is useful, but I question whether it is tangible? Does this need to be claimed as a computer program product to be patentable, or is it ok if the steps are executed by a human user?

Thanks,
Retarius

[Wiscagent]

How about if you add a step to the process?  Something to the effect that
 - if the decision if YES, then the product is shipped. 
That's certainly a tangible result.

[bartmans]

This seems to be equivalent with many diagnostic methods in the medical field. There is currently a large discussion whether these would be allowed under 101, and the Supreme Court will issue a decision on such a case in due time (they have taken up Prometheus Labs., Inc. v. Mayo Collaborative Servs for a second time now). Also please check Lab. Corp of America Holdings v. Metabolite Labs., Inc. (decision of the fed. Circ.) on a similar case.

The machine or tarnsformation test does not fit on these cases, in a similar way as it does not fit on the invention that is described here. So perhaps the Supremes will come up with another criterium?

Regards.

[Wiscagent]

I have a general understanding of the machine or transformation test.  But one thing I don't understand is this:
If an inventor asks me to draft a patent application for an algorithm or a diagnostic method, some of my questions would relate to "Why would someone want to do  this?" and "What would you do after you get the result?".  Presumably, the purpose of the algorithm or diagnostic method is to make a decision, and take a tangible action.

When I draft at least some of the claims, I would include that action as a step in the process.  Wouldn't that mitigate the concern about patentable subject matter, i.e. sec 101?

[JimIvey]

If by "patentable" you mean "statutory" under Section 101, it all comes down to how you draft the application, including the claims.  It's certainly possible to draft an application for such an invention to comport with Section 101.

Regards.

[khazzah]

I have been approached by an inventor who wants to obtain a patent for his invention.  The invention is a process for determining whether a product incorporating hardware and software should be released for volume production - therefore, the output is basically a yes/no decision on release.  The decision is based on review of a collection of various testing and time metrics - which could be process steps expressed as an algorithm.

It sounds to me the output is useful, but I question whether it is tangible?

Not to be picky, but "tangible" is not the test any more. "Abstract" is the test. Anything abstract is non-statutory.

Does this need to be claimed as a computer program product to be patentable

Another common paradigm is claiming the computer (statutory class = apparatus) configured to execute the software.

or is it ok if the steps are executed by a human user?

Keep humans out of the claim. Draft the claims from the standpoint of the software receiving info from the user.

See this thread for reasons why humans should not be in the claims. http://www.intelproplaw.com/ip_forum/index.php/topic,19983.0.html