In the US, the law is in a state of flux in relation to
precisely what constitutes patentable subject matter, particularly
in terms of business methods, software, and the like. Users of the
patent system find themselves caught in an uncomfortable fix
between a controversial Federal Court decision, and what is
expected to be a landmark Supreme Court judgement sometime next
year. In an attempt to create stability during this unusual period,
the USPTO has issued a new set of guidelines to Examiners. The news
is generally positive for patent applicants.
Overview of the Guidelines
The crux of the guidelines is a two-stage process for assessing
whether or not a patent claim defines subject matter eligible for
patenting. Firstly, Examiners are to check that a claim falls
neatly into one of the four defined categories of eligible subject
matter, being: processes, machines, manufacture, or compositions of
matter. Secondly, assuming the first step is satisfied, the
Examiners are to confirm that the claim does not fall foul of a
judicially recognised exception, such as those applying to the
patenting of laws of nature or mental processes.
Whilst this seems, on first impressions, to be a broad and
straightforward approach, nuances in various definitions create
complications, particularly in the context of processes. In
particular, a process is defined to be "an act, or series of
acts or steps that are tied to a particular machine or apparatus or
transform a particular article into a different state or
thing". In the context of software and business methods, where
the protection of methods has traditionally been a preferred
approach, this definition opens a wide range of potential
The USPTO has made it clear that claims directed towards
computer systems are still allowable in most circumstances. For
example, one suggestion is to claim a machine having a
microprocessor configured to perform a particular method. Such a
claim is to be considered by Examiners as directed to a machine
consisting of physical parts, thus avoiding much of the present
The potential for obtaining patent protection over software has
been boosted, with confirmation that a popular form of software
claim is acceptable within the guidelines. The USPTO has suggested
applicants claim "a non-transitory computer readable medium
with an executable program stored thereon", and then define a
method performed by software. In effect, this is a fancy way of
obtaining protection over a CD, DVD or the like which carries a
computer program. This is useful in a practical sense, as
infringement can be established from the sale of software in a
conventional retail environment.
Method claims are subjected to increased scrutiny under the
guidelines, with a particular focus on the presence of a machine,
and the transformation of articles. Fortunately, the final position
is by no means as bleak as some may have predicted. In fact, the
USPTO have made two fairly generous concessions:
Electronic data can be regarded as an article. Importantly, the
necessary "transformation" can occur where the nature of
data is changed such that it has a different function or is
suitable for a different use.
Including a reference to the use of a microprocessor or the
like for the purposes of comparing/processing data should be enough
to satisfy an Examiner.
This seems to present a fairly neutral holding pattern whilst we
await further definitive guidance from the Supreme Court.
It is important to note that USPTO guidelines do not constitute
law. Rather, they provide a framework for Examiners to roughly
assess what should and should not be allowed to pass as a patent.
Ultimately, the validity of a patent is to be assessed by a court,
based on the law of the day. Oddly enough, some patents may drift
in and out of validity over the course of their terms. This
reinforces a need to take an active approach in managing ongoing
risks in key markets, to best ensure that you have appropriate
protection when you need it most.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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