Does a business method have to relate to the technological arts?
When the Patent and Trademark Office began issuing patents for business methods, it also began
rejecting some business method claims using a “technological arts” requirement.
Essentially, the PTO established a requirement that business method claims had
to use or relate to the technological arts to be entitled to a patent, and this
requirement generally meant that the business method had to use a computer or
other electronic processing device. Most applicants met this requirement by
having their patent application include a statement that the business
method can be performed and carried out by a computer. However, in October
2005, the Board of Patent Appeals and Interferences issued an opinion which
essentially eliminated this technological arts requirement. The obvious result
of this decision is that the potential scope of business method patents has
been expanded because a computer or other electronic processing device does not
need to be included in the process anymore.
It is likely that this
decision will be appealed to the Federal Circuit, and then to the Supreme
Court, so it could be some time before it is finally resolved. In the meantime,
however, the PTO has issued new guidelines which essentially mean that patents
will only be issued to business methods if they meet one of two requirements.
First, a business method patent will be granted if the business method physically
transform a physical object. Unfortunately, the precise meaning of “transform”
is rather vague at this time. Second, a business method patent will be granted
if the business method provides a useful, concrete and tangible result. This
means that the result must be specific, substantial and specifically stated in
the claims(useful); must be
something that is not abstract, but which is a real-world result (tangible);
and must have be a result which is repeatable and predictable (concrete).
It is unclear how
these new guidelines will affect the issuance of business method patents, but
in light of the elimination of the technological arts requirement (and until
the issue is finally resolved by the Federal Circuit or Supreme Court), one
would expect an increase in the number of business method patent applications.
.
Posted in: FAQ-PATENTS
