Eight tips for avoiding unpatentability rejections in Business Method Cases

One of the most interesting presentations at the May 4, 2005 business method partnership meeting was by Bob Weinhardt who is a Business Practice Specialist at the PTO.  Mr. Weinhardt managed the “second pair of eyes” review of allowed applications in the Business Methods art and provided a checklist of common problems that were uncovered in those reviews. Although in my view, some of the PTO’s policies do not conform with the law, Mr. Weinhardt’s comments are quite useful if you want the PTO to allow your cases. I have compiled the presentation into these following eight tips:

1) Specifically call-out a practical application of any claimed algorithms (relate it to the real-world).

2) In method claims, explicitly relate the method to a machine (such as a computer) in the body of the claim.

3) Data per se is not patentable.

4) Non-functional data (as opposed to computer code) stored on a device (such as a computer disk) is not patentable.

5) A claimed computer program per se will be rejected unless it is tangibly embodied on a computer readable medium.

6) For signal claims — the signal must firmly related to a machine or computer readable medium.

7) Don’t try to get a patent on an invention that merely uses the Internet or a computer to do what was previously done by hand.

8) Think about your claims in terms of the broadest reasonable meaning.  The PTO would rather not implicitly import limitations into the claims.