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 complications.

Computer Systems

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 controversy.

Software

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.

Pure Methods

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.

Closing Comments

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.