Mailer: Business Methods Subject Matter Patent - Eligibility Examples
Publication Date: March 3, 2017
The United States Patent and Trademark Office (USPTO) has published a series of examples and hypotheticals discussing issues regarding patent eligibility. The latest publication was released in December 2016 and pertains exclusively to Business Methods. The previous publications were issued in December 2014, January 2015, and July 2015.
The December 2014 issue primarily focused on the analysis of claims reciting or involving Laws of Nature or Natural phenomena. The January and July 2015 reports from the USPTO talk about analysis of claims relating to ‘computer software and hardware component’. The current December 2016 publication almost exclusively deals with patentability of Business Methods.
Business Method Patents: Pre Alice -
Many patent offices across the globe have been deciding how to treat Business Method Patents, including the USPTO. The Business Method patent saga started gaining international recognition in 1994, when the US Court of Appeals for the Federal Circuit held that business methods are patent-eligible as long as they produce a ‘useful, tangible and concrete result’. This famous Federal Circuit decision from the State Street Bank & Trust vs. Signature Financial Group was overturned in the 2010 Bilski vs. Kappos case where the Supreme Court of the United States decided that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather ‘a useful and important clue, an investigative tool, for determining whether sole claimed inventions are processes under the law’. The court found that a disembodied business method was too abstract for patent eligibility.