Patenting Software and Methods of Doing Business

Modern developments such as computers, the Internet and the greater complexity of our economy have lent more importance to the development and patent protection of new business methods and complex computer software. The number of awarded software patents has skyrocketed in recent years, growing from about 3000 in 1990 to 16,000 in 2005. However, these awards have been controversial. Over the years, the courts have swayed back and forth, alternating between being permissive and being strict in granting such patents. Should these inventions be protected by patent law?

The patent law states

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.(35USC 101)

Business methods and software can be viewed as processes and processes, according to the law, are patentable. But then, why this ambivalence? It all hinges on how the word “process” is defined. Depending on how this word is interpreted, your invention may or may not be eligible for patent and as an inventor you need to know why.

History

The first financial patent was granted on March 19, 1799, to Jacob Perkins of Massachusetts for an invention for “Detecting Counterfeit Notes.”

A patent, possibly the first software one, was granted on August 17, 1966 in the United Kingdom for a method of efficiently managing a computer memory for a mathematical algorithm. It was titled “A Computer Arranged for the Automatic Solution of Linear Programming Problems.”

Infamous “Method of Doing Business” Patent

One of the most talked about patents of all time was the one-click patent awarded to Amazon in September 1999. This patent allowed Amazon’s customers to make a purchase with a single click of the mouse without having to re-enter their credit card information. After a reexamination of this patent, the patent office in October 2007, accepted some of the claims and rejected others, thus limiting the scope of the invention.

Last Court Decision

On October 30 2008, the pendulum swayed back toward a much stricter interpretation of the law as the courts came up with a long-awaited decision. The Federal Circuit handed down its “en banc” decision in In re Bilski. This ruling invalidated many business-method patents granted in the last decade. What

does this latest ruling mean if you wish to file a patent for a software process or for a method of doing business?

Patentable Subject Matter

Processes that transform material articles such as iron ore, or food ingredient, from one state or thing to another, are patent-eligible.

Processes that transform non-material articles such as electromagnetic signals or electrons flowing through a wire, are patent-eligible. However, given the uncertainty in the courts it is better to associate those processes with actual material objects such as radio receivers or computer memories.

Processes moving bits of information around in a dedicated machine such as the microprocessor running your car’s ignition system are potentially patentable but the bit processes need to have tangible results.

Non-Patentable Subject Matter

Processes such as algorithms transforming bits of information from one format to another in the memory of a general purpose computer are non-patentable. These include, for example, financial or scientific data computation. Processes taking place in a human brain (i.e., ideas) are not patentable. Non-patentable subject matter includes (but is not limited to):

• Laws of nature
• Natural phenomena
• Scientific principles
• Abstract ideas

To be safe, always tie the process describing your business method or the software that you have invented to a material transformation or to a particular machine.

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2010 by George Levy

Getting Technical Help

You have a great idea but you don’t have the technical know how to move forward and you need the help of savvy professionals to guide you. What do you do? Several private companies, government organizations and university resources are available for you to draw on:

Universities
You can get inexpensive help from engineering students by funding their research projects. Make sure you have well written specifications for what needs to be done. These specifications will become a statement of work for the students. UCSD provides inventors with a well defined mechanism for submitting proposals. UCLA accepts industry sponsored research. UC Berkeley provides a Web site to allow the public to search its faculty according to the desired field of expertise.

Private Invention Developers
Private companies can also help you with your invention. The best way to get a referral to a competent invention development company is to attend a local inventor’s group.

National Laboratories
If your invention is hi-tech you can get help from national laboratories established by the US government. They house world class facilities and employ more than 30,000 scientists and engineers performing cutting edge research in a wide range of scientific disciplines. Some of these laboratories include:

The Ames Laboratory is a national center for the synthesis, analysis, and engineering of rare-earth metals and their compounds. Ames conducts fundamental research in the physical, chemical, and mathematical sciences associated with energy generation and storage.

The Argonne National Laboratory is one of the Department of Energy's largest multidisciplinary research centers. Argonne research falls into five broad categories: basic research, scientific facilities, energy resources programs, environmental management and National security.

The Brookhaven National Laboratory conducts research in the physical, biomedical, and environmental sciences, as well as in energy technologies and national security and builds and operates major scientific facilities available to university, industry and government researchers.

The Idaho National Laboratory is a science-based, applied engineering national laboratory dedicated to supporting the U.S. Department of Energy's missions in environment, energy, science and national defense.

The Lawrence Berkeley National Laboratory conducts unclassified research across a wide range of scientific disciplines with key efforts in fundamental studies of the universe; quantitative biology; nanoscience; new energy systems and environmental solutions; and the use of integrated computing as a tool for discovery.

The National Energy Technology Laboratory assures that U.S. fossil energy resources can meet increasing demand for affordable energy without compromising the quality of life for future generations of Americans.

The National Renewable Energy Laboratory develops renewable energy and energy efficiency technologies and practices, advances related science and engineering, and transfers knowledge and innovations to address the nation's energy and environmental goals.

The Oak Ridge National Laboratory conducts basic and applied research and development to create scientific knowledge and technological solutions that strengthen the nation's leadership in key areas of science; increase the availability of clean, abundant energy; restore and protect the environment; and contribute to national security.

The Pacific Northwest National Laboratory delivers science-based solutions to the Department of Energy's major challenges of expanding energy, ensuring national security, and advancing mission-driven science through outstanding staff and R&D capabilities, excellent operations, and high-value partnerships.

Sandia National Laboratories develop science-based technologies that support national security through science and technology, people, infrastructure, and partnerships.

The Savannah River National Laboratory is recognized as a world-class center of excellence for the development and application of innovative science and technology solutions.

The Department of Energy website was an excellent resource for the information in this newsletter and will provide you with information about other national laboratories.

For archived newsletters and information resources for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as any form of legal advice. ©2009 by George Levy