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A recent inquiry led to my preliminary review of patenting of “methods” in connection with patent eligibility in the USPTO. As outlined below, the USPTO will look for technology in your invention to allow patenting of your method.

Method or Business Method, Choose One

Business methods have attracted attention in patent developments. The labeling as genus “method” and species “business method” appears as contortion against the expected meaning for patent prosecution. Instead of procession from superset “method” and then to subset “business method,” these labels “method” and “business method” appear to occupy equal hierarchical footing in channeling of prospective inventions, where different reviews result after this separation at intake.

Earlier Inclusiveness

Earlier, discussions of patent eligibility had an overarching feel of “methods” and subset treatment of “business methods.” For primers on “business methods,” please see my previous posts here and here. Later in this post, the discussion will leave off “business methods” and continue with only “methods.”

Current Exclusivity

Current guidelines appear to split the review of patent eligibility between “methods” and “business methods.” The following text, although directed to practice before the Patent Trial and Appeal Board (PTAB), offers insight on this split.

In addition to the definitions in §42.2, the following definitions apply to proceedings under this subpart D:

(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

[77 FR 48753, Aug. 14, 2012]

Citations here, here slides 94-96, here page 49, and here.

Identify Technology for Patenting

Kindly consider whether your invention includes any technology, for receptiveness by the USPTO.

Guidance

With respect to methods, putting aside business methods, the USPTO offers the following guidance on patent eligibility, in part.

Sample Factors

Factors Weighing toward Eligibility:
  • Recitation of a machine or transformation (either express or inherent).
    • Machine or transformation is particular.
    • Machine or transformation meaningfully limits the execution of the steps.
    • Machine implements the claimed steps.
    • The article being transformed is particular.
    • The article undergoes a change in state or thing (e.g., objectively different function or use).
    • The article being transformed is an object or substance.
  • The claim is directed toward applying a law of nature.
    • Law of nature is practically applied.
    • The application of the law of nature meaningfully limits the execution of the steps.
  • The claim is more than a mere statement of a concept.
    • The claim describes a particular solution to a problem to be solved.
    • The claim implements a concept in some tangible way.
    • The performance of the steps is observable and verifiable.
Factors Weighing against Eligibility:
  • No recitation of a machine or transformation (either express or inherent).
  • Insufficient recitation of a machine or transformation.
    • Involvement of machine, or transformation, with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied.
    • Machine is generically recited such that it covers any machine capable of performing the claimed step(s).
    • Machine is merely an object on which the method operates.
    • Transformation involves only a change in position or location of article.
    • “Article” is merely a general concept (see notes below).
  • The claim is not directed to an application of a law of nature.
    • The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature.
    • Law of nature is applied in a merely subjective determination.
    • Law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps.
  • The claim is a mere statement of a general concept (see notes below for examples).
    • Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept.
    • Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus.
    • The claim only states a problem to be solved.
    • The general concept is disembodied.
    • The mechanism(s) by which the steps are implemented is subjective or imperceptible.
NOTES: Examples of general concepts include, but are not limited, to:
  • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
  • Basic legal theories (e.g., contracts, dispute resolution, rules of law);
  • Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
  • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
  • Interpersonal interactions or relationships (e.g., conversing, dating);
  • Teaching concepts (e.g., memorization, repetition);
  • Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
  • Instructing “how business should be conducted.”

Citation here pages 3 and 4.

Terms Confirming Quest for Technology

The factors listed above use certain terms that the USPTO takes care to further define toward identification of technology in a patent method claim.

Machine

A “machine” is a concrete thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. This definition is interpreted broadly to include electrical, electronic, optical, acoustic, and other such devices that accomplish a function to achieve a certain result. The machine should implement the process, and not merely be an object upon which the process operates. The claim should be clear as to how the machine implements the process, rather than simply stating “a machine implemented process.” The machine limitations should make clear that the use of the machine in the claimed process imposes a meaningful limitation on the claim’s scope. An “apparatus” does not have a significantly different meaning from a machine and can include a machine or group of machines or a totality of means by which a designated function or specific task is executed.

Article

An “article” includes a physical object or substance. The physical article or substance must be particular, meaning it can be specifically identified. An article can also be electronic data that represents a physical object or substance. For the test, the data should be more than an abstract value. Data can be specifically identified by indicating what the data represents, the particular type or nature of the data, and/or how or from where the data was obtained.

Transformation

“Transformation” of an article means that the “article” has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Manufactures and compositions of matter are the result of transforming raw materials into something new with a different function or use. Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mathematical manipulation per se has not been deemed a transformation; but, transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use.

Particular

A “particular” machine or apparatus or transformation of a “particular” article means that the method involves a specific machine or article, not any and all machines or articles. This ensures that the machine or transformation imposes real world limits on the claimed method by limiting the claim scope to a particular practical application.

Computer Implementation

For computer implemented processes, the “machine” is often disclosed as a general purpose computer. In these cases, the general purpose computer may be sufficiently “particular” when programmed to perform the process steps. Such programming creates a new machine because a general purpose computer, in effect, becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. To qualify as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions. If the claim is so abstract and sweeping that performing the process as claimed would cover substantially all practical applications of a judicial exception, such as a mathematical algorithm, the claim would not satisfy the test as the machine would not be sufficiently particular.

Field of Use

A “field-of-use” limitation does not impose actual boundaries on the scope of the claimed invention. A field-of-use limitation merely indicates that the method is for use in a particular environment, such as “for use with a machine” or “for transforming an article,” which would not require that the machine implement the method or that the steps of the method cause the article to transform. A field-of-use limitation does not impose a meaningful limit on the claimed invention.

Insignificant Activity

Insignificant “extra-solution” activity means activity that is not central to the purpose of the method invented by the applicant. For example, gathering data to use in the method when all applications of the method would require some form of data gathering would not impose a meaningful limit on the claim.

Citation here pages 6 and 7.

Text Copyright © 2012 Bob Brill

 

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