Wednesday, April 30, 2008

PTO's Checklist for Business Method Patents

If you file a patent that has the misfortune of being treated as a "business method patent" by the PTO - meaning that it is in Class 705 - then there is a special checklist that the PTO will use during prosecution. Check out the Business Methods Allowance Checklist - one of several valuable resources on the PTO's page on business methods.

Business Methods Allowance Checklist

  • Useful, concrete, and tangible result.

  • Not a judicial exception per se.

  • Not just data per se.

  • Not simply automating a known or obvious process on a computer or on the internet.

  • Not a computer program per se.

  • Not merely non-functional data on a storage device, i.e., music on a cd.

  • If functional signal is being claimed, must be statically embedded in a computer-readable medium.

  • The feature that appears to distinguish over the prior art does not merely appear in a recitation of intended use, the name or title of a feature or in non-functional descriptive material.

  • Searches for analogous art related to the distinguishing feature were conducted.

  • The meanings attributed to the words of the claim are the plain, ordinary, meanings unless criteria for a special definition have been met.

*You must be able to answer yes to all of these statements.

No comments: