On August 14, 2012, the USPTO issued final rules, effective
September 16, 2012, that implement provisions of the Leahy-Smith
America Invents Act related to definitions for the transitional
program for covered business method patents. The rules set forth
definitions for a covered business method patent and a
technological invention.
For a "covered business method patent," the USPTO adopted
the language from the AIA. In particular, under Rule 42.301, a
"covered business method patent" is "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." According to the USPTO, the phrase
"financial product or service" should be interpreted
broadly. Further, a patent having one or more claims directed to a
covered business method is considered a covered business method
patent.
For a "technological invention," the USPTO assigned a
somewhat circular definition. As defined under Rule 42.301, a
"technological invention" includes considering "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." The definition does not further define
"technological" or "technical." Further, the
phrase "solves a technical problem using a technical
solution" is with respect to "the claimed subject matter
as a whole."
To illustrate the definitions, the USPTO pointed to the Office
Patent Trial Practice Guide for examples. See 77 Fed. Reg. 48756
(2012). One example of a covered business method includes a method
for hedging risk in the field of commodities trading; on the other
hand, an example of a technological invention includes a novel and
nonobvious hedging machine for hedging risk in the field of
commodities trading. Another example of a covered business method
includes a method for verifying the validity of a credit card
transaction; on the other hand, an example of a technological
invention includes a novel and nonobvious credit card reader for
verifying the validity of a credit card transaction.
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.
