Business Methods to be Patentable?

Author: Carmel Irudayanathan

It's good news for businesses which are planning to protect their business methods as they are to be considered as patentable subject matter as per the recent United States Supreme Court ruling in Bilski v. Kappos case. In response to the Supreme Court's decision, the USPTO has published interim guidelines for examiners on how to evaluate a patent application claim which falls within the scope of patentable subject matter based on 35 U.S.C. § 101.

The current standard in examining the business method claims has been relaxed for claims to be patentable subject matter unlike earlier examination prior to the ruling when business methods were curtailed. The guideline instructs examiners 1) to determine what the applicant has invented and is seeking to patent, 2) to conduct thorough search of the prior art before evaluating the claimed invention and also 3) to determine if the claim complies with the subject matter eligibility requirements.

The claim needs to demonstrate on how it meets the criteria of machine or transformation test or show evidence that the abstract idea can be practically applied to become patent eligible; claims which doesn't meet the criteria cannot be patent eligible under 35 U.S.C. § 101. Machine or transformation test is a test of patent eligibility and the claims need to qualify either of the two main criteria (1) the business method is implemented with a use of machine or (2) transforms an article from one state to another. To simplifier it further, claims should relate to systems or software that implements the business method or transform a particular article into a different state or thing.

The court felt that the machine or transformation test overly narrowed the inventions that could be patentable but nevertheless felt that the test is a useful and important clue but could not be the only test in determining patentable subject matter. Hence examiners as per the guideline, can reject claims even if it meets the criteria of machine or transformation test based upon 35 U.S.C. § 101. Even mere field of use limitations cannot convert a claim which is not patent eligible into a claim that is patent eligible. The patentability process doesn't stop here as the examiner needs to examine the claim for compliance against requirements § 102, 103 and 112.

As a next step, examiners would look for novelty in the invention by comparing the prior art and the claimed invention. If no differences are found between them they would label it non patentable even after satisfying the § 101 patent eligibility as it lacks novelty under § 102. Also examiners would assess the differences made out between the prior art and the claimed invention to determine if the invention was non-obvious during the time of invention to be complacent under § 103. The examiner would need to determine if the claimed invention complies with § 112 for adequate written descriptions.

Hence examiners should avoid focusing on issues of subject matter patent eligibility under § 101 to the detriment of considering compliance with requirements of novelty, non-obviousness, and adequate written description under § 102, 103 and 112 respectively. Only in extreme cases, examiners would reject patents under § 101. After reviewing the claimed invention under all the requirements § 101, 102, 103 and 112, the examiner would list all the reasons and bases for rejecting claims in the First Office action. The First Office action would clearly mention the findings, summary and the reasons for the rejection.

Bilski has opened the possibility of claims that do not meet § 101 might still be patent eligible. The subject matter § 101 requirement would just not be the sole deciding factor as there are many other factors like novelty, non-obviousness, adequate written description which are to be considered. The guidelines ensure that examiners evaluate claims in a logical order and the subject matter requirement should be evaluated first and other requirements in a sequence. This provides inventors an opportunity to resolve the patentability issue before it gets rejected and helps them to save time and money.

Article Source: http://www.articlesbase.com/patents-articles/business-methods-to-be-patentable-4785969.html

About the Author

Carmel Irudayanathan is an editor for the law firm of Kunzler Needham Massey & Thorpe. Learn more about patentable subject matter at kunzlerip.com.