The USPTO Issues Subject Matter Eligibility Examples on Business Methods
In late December, the United States Patent and Trademark Office (USPTO) released a series of subject matter eligibility examples meant to provide guidance for drafting claims pertaining to business methods. This is the first time that the USPTO has issued guidance on such matters. The examples, labeled 34, 35, and 36, serve to clarify the validity of claims pertaining to abstract matters under 35 U.S.C. § 101 and focus on a system for filtering internet content, verifying a bank customer’s identity to permit an ATM transaction, and tracking inventory, respectively. Interestingly, while the fact patterns and claims of 35 and 36 are hypothetical, example 34 is taken directly from BASCOM Global Internet v. AT&T Mobility LLC where the claims were ruled eligible by the Federal Circuit in 2016. BASCOM has played an important role in the changing landscape of software-related patents.
The USPTO guidance is promising for several reasons. First, it provides an opportunity for clarification in an area that has not yet received adequate attention for identifying and developing patent eligible claims. Second, this is the first time the USPTO has issued guidance in this area, providing more attention for claims that previously may have been considered patent ineligible. Third, this guidance comes as a part of a series of documents that were issued in 2014 and 2015 for claims pertaining to laws of nature and natural phenomena.
Overall, this guidance is a promising step in the direction of drafting patent eligible claims pertaining to business methods in a post-Alice world and may signal a change in the USPTO’s approach to dealing with such claims.
– Nicholas Vincent and Anthony D. Sabatelli, PhD, JD
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