question.jpgIn Patents

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.