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[cbpatent]

In New York.

1. can an idea be patented
 
2. can a business method be patented
 
3. can a business operating system be patented; if the system is an idea, concept or method can it be paired with a tangible item like a special kind of computer or program and get patented piggy back so to speak
 
4. state street bank had a biz method patent for some kind of financial system/product but a recent court ruling seems to be in favor of reversing biz method patents; they want to go back to the idea that a patent must be something you can touch, is this so?

5. are there other ways to protect a business method or operating system via trademark (probably quite limited to the name), copyright, or any other type of corporate entity...

[Clifford D. Hyra]

In New York.

1. can an idea be patented
 
2. can a business method be patented
 
3. can a business operating system be patented; if the system is an idea, concept or method can it be paired with a tangible item like a special kind of computer or program and get patented piggy back so to speak
 
4. state street bank had a biz method patent for some kind of financial system/product but a recent court ruling seems to be in favor of reversing biz method patents; they want to go back to the idea that a patent must be something you can touch, is this so?

5. are there other ways to protect a business method or operating system via trademark (probably quite limited to the name), copyright, or any other type of corporate entity...

Patent and copyright are federal law and do not change from state to state.  Trademark law is primarily federal as well.

1) No, an idea itself cannot be patented.  Only processes, machines, manufactures, and compositions of matter may be patented. 

2) Yes, if it meets the requirements for patentability.

3) I am not sure what you mean.  Computer hardware and software are patentable if they are new and useful, etc.

4) In re Bilski has put the patentability of business methods in a state of flux.  There is considerable uncertainty as to what can and cannot be patented.  The Bilski rule is that, for a method to be patentable, it must either:

a) be tied to a particular machine or apparatus; or

b) transform a particular article into a different state or thing.

If the particular article that is transformed is data, it must represent specific physical objects or substances.

5) Trademarks can protect your logos, slogans, brands, product line names, etc.  Copyright can protect your computer code and the appearance of your website.  It may be possible to protect a user interface with a design patent.  None of these provides the same protection as a utility patent.

[JimIvey]

I came up with slightly different answers.

1. can an idea be patented

Yes.  All you have to do is describe your idea in a claim that does not cover anything already publicly known or any obvious variation of anything already publicly known.  And, you have to describe how to implement and use your idea as described in the claim.  If you can do all that, your idea is patentable.

2. can a business method be patented

There is no currently accepted definition of "business method" in US patent law.  The term is completely meaningless as far as US patent law is considered.

3. can a business operating system be patented; if the system is an idea, concept or method can it be paired with a tangible item like a special kind of computer or program and get patented piggy back so to speak

If I understand you correctly, yes, a computer implemented method used in operating a business is eligible for patent protection (i.e., patentable, provided it's novel, non-obvious, and adequately described in the patent application).

Just be aware that "operating system" is a term of art in computers, but I don't think you're using it that way.  In addition, I don't think a system (as I understand the term) can be an idea -- perhaps an implementation of an idea.

4. state street bank had a biz method patent for some kind of financial system/product but a recent court ruling seems to be in favor of reversing biz method patents; they want to go back to the idea that a patent must be something you can touch, is this so?

The Bilski court (the recent decision) didn't reverse State Street on "business method" but did add a new requirement to any process that is the subject of a patent application in that it must involve one of the other classes of eligible subject matter -- a machine (has moving parts), an article of manufacture (no moving parts), or composition of matter (everything else). 

Still trying wrap my mind around how a process could not involve some physical aspect of our universe.  Try to take some action, any action, without having any change whatsoever in the physical universe (remember that thoughts manifest physically and can be observed by physicians using modern equipment).

"Process" in section 101 seems pretty clear and unambiguous to me. 

5. are there other ways to protect a business method or operating system via trademark (probably quite limited to the name), copyright, or any other type of corporate entity...

I'll agree with Mr. Hyra.  Many forms of IP are complementary, none is a substitute for another.

Regards.

[Clifford D. Hyra]

I came up with slightly different answers...

4. state street bank had a biz method patent for some kind of financial system/product but a recent court ruling seems to be in favor of reversing biz method patents; they want to go back to the idea that a patent must be something you can touch, is this so?

The Bilski court (the recent decision) didn't reverse State Street on "business method" but did add a new requirement to any process that is the subject of a patent application in that it must involve one of the other classes of eligible subject matter -- a machine (has moving parts), an article of manufacture (no moving parts), or composition of matter (everything else). 

Still trying wrap my mind around how a process could not involve some physical aspect of our universe.  Try to take some action, any action, without having any change whatsoever in the physical universe (remember that thoughts manifest physically and can be observed by physicians using modern equipment).

"Process" in section 101 seems pretty clear and unambiguous to me. 

I understand you are trying to keep things simple, but hopefully you understand that there is more to Bilski than that.  A general purpose machine or apparatus is not sufficient, and no machine or apparatus is sufficient if it is only "insignificant post-solution activity." The BPAI is now rejecting even system (non-method) claims using Bilski.  I think the patentability of any business method is in question, at this point.

[JimIvey]

I understand you are trying to keep things simple, but hopefully you understand that there is more to Bilski than that. 

Yes, of course.  I've written much about Bilski in other posts in here.  Don't have time to repeat it all.

A general purpose machine or apparatus is not sufficient, and no machine or apparatus is sufficient if it is only "insignificant post-solution activity."

"Insignificant post-solution activity" is a notion of the Walter-Freeman-Abele test that is explicitly discarded by Bilski.

The BPAI is now rejecting even system (non-method) claims using Bilski.

I haven't seen that yet, but it would be directly contrary to Bilski.

Wouldn't be the first time the USPTO gets the law wrong.  Although my experience has been that the BPAI gets the law correct much more so that does the examining corps.

I think the patentability of any business method is in question, at this point.

You say that as if you know what "business method" means.  I've been working in and around software and e-commerce patents for 18 years now and I still don't know what the term means in the context of US patents.  If you've come across a definition, I'd love to see it.

Regards.

[Clifford D. Hyra]

A general purpose machine or apparatus is not sufficient, and no machine or apparatus is sufficient if it is only "insignificant post-solution activity."

"Insignificant post-solution activity" is a notion of the Walter-Freeman-Abele test that is explicitly discarded by Bilski.

The BPAI is now rejecting even system (non-method) claims using Bilski.

I haven't seen that yet, but it would be directly contrary to Bilski.

Wouldn't be the first time the USPTO gets the law wrong.  Although my experience has been that the BPAI gets the law correct much more so that does the examining corps.

I think the patentability of any business method is in question, at this point.

You say that as if you know what "business method" means.  I've been working in and around software and e-commerce patents for 18 years now and I still don't know what the term means in the context of US patents.  If you've come across a definition, I'd love to see it.

Regards.

Jim, you are wrong that insignificant post-solution activity is discarded by the Bilski court.  That corollary was not part of the Freeman-Walter-Abele test but in fact was around before Diehr and confirmed by the Diehr Court, as explained in the text of Bilski. The court clearly affirms the use of this corollary on Page 16-17. 

Here is a blog post about some recent system claim rejections under Bilski: http://bpaiwatchdog.blogspot.com/2009/03/bpai-confirms-101-rejection-of-method.html

As far as not knowing the definition of business method patents, I have never heard anyone say that before.  Of course there is no bright line distinction, just as with "mechanical" or "electrical" patents- one patent can have elements of more than one "class" of patent.  Nevertheless, business methods were excluded from patentability until State Street, which specifically addressed business method patents. Everyone I know uses the term "business method" without any apparent confusion.  Business method patents cover methods of doing business.

[Wiscagent]

Clifford wrote "Business method patents cover methods of doing business."

Then if I were in the plywood business, would this be an example of a business method claim?
1) "A process for making a laminate comprising gluing a first layer of wood to a second layer of wood."

How about this?
2)  "A process for shipping plywood comprising (i) marking stacks of plywood with their intended destination; and (ii) loading the marked stacks of plywood onto trucks with previously designated destinations."

Or this?
3)  "A process for confirming delivery of plywood comprising (i) at the manufacturing site, marking stack of plywood with bar codes; (ii) at the retail or wholesale outlet using a laser/computer gadget to read the bar codes; and (iii) sending a computer signal back to the manufacturing site to confirm delivery of the plywood."

I fail to see that there is any fundamental distinction that would make one of these a business methods claim but another one not a business methods claim.  And sorry for the sloppy "claim" writing.

[rts]

I would suggest that "business method" is colloquial lingo for anything falling into Class 705.

[JimIvey]

I would suggest that "business method" is colloquial lingo for anything falling into Class 705.

That would make things easy for examiners of inventions of Class 705, wouldn't it?  (assuming bizmeth patents come into disfavor).  Why not just create a Class 9999 of unpatentable inventions?  ;-)  We could have subclasses for lack of novelty and for obviousness as well as non-statutory subject matter.  It would really streamline examination!

And, not to be too critical, but I doubt many slashdotters have any idea what Class 705 is yet they seem happy to bat about "business methods" when the topic of patents comes up.  I understand RTS probably means among professionals.  But I certainly hope courts and legislature decide statutory subject matter along lines laid down by the PTO.

The closest I've come to understanding what lay people (and professionals alike) mean by "business method" patents is computer-implemented inventions in which some data somewhere represents money.  If so, why was there no uproar when NCR and TI were patenting methods performed by their computerized cash registers for decades?  Heck, how old are cash registers?  Any method claims drawn to cash registers, ever?

Yes, I realize that such method patents would be upheld under Bilski.  But my point is that, for some reason, methods involving representation of money have become a bit taboo, and I don't fully understand why.

I think it's important to not overlook a common, even pervasive, confusion between 101 and 102/103.  "Business method" or "method of doing business" is often preceded with "merely" or "just", suggestive a triviality or -- dare I say -- obvious quality of all such methods.  People seem happy to discard such methods because of a unstated belief that all such methods are obvious, if not downright anticipated.  Remember, failure under Section 101 never reaches novelty or obviousness.  As I mentioned (perhaps even in this thread), what if there was a flash-of-genius-type non-obvious financial solution to the current melt down?  Imagine that the inventor of this solution knew (or merely believed) that all value in bringing the solution into use would go to others.  Any biz-meth patent haters out there feel any differently?

Regards.

[Clifford D. Hyra]

Clifford wrote "Business method patents cover methods of doing business."

Then if I were in the plywood business, would this be an example of a business method claim?
1) "A process for making a laminate comprising gluing a first layer of wood to a second layer of wood."

How about this?
2)  "A process for shipping plywood comprising (i) marking stacks of plywood with their intended destination; and (ii) loading the marked stacks of plywood onto trucks with previously designated destinations."

Or this?
3)  "A process for confirming delivery of plywood comprising (i) at the manufacturing site, marking stack of plywood with bar codes; (ii) at the retail or wholesale outlet using a laser/computer gadget to read the bar codes; and (iii) sending a computer signal back to the manufacturing site to confirm delivery of the plywood."

I fail to see that there is any fundamental distinction that would make one of these a business methods claim but another one not a business methods claim.  And sorry for the sloppy "claim" writing.

Like I said, there is no clear cut fundamental distinction between any of the types of patents and I have no doubt you could do this same sort of exercise with a "mechanical" patent.

The first claim is clearly not a business method claim.  It is a manufacturing method.  Do not say "manufacturing is business" because that is just playing games with semantics.  In some sense everything is business and in some sense most things are "mechanical" but that is not what is meant by "business method." 

I would say the second claim is a business method claim.  It is a logistical process with no technological component.

The third claim is close because it is essentially the second claim, but with some technology added in.  I would say it is not a business method claim, but it is a sort of hybrid.

I am not saying that a business method exception is in any way workable or desirable, but I think it is wrong to say that "business method" is meaningless and has no definition.  Clearly there are some things that fall into the business method category, some that do not, and some that are in between.  Anything that is going to be considered a business method, I would be concerned about its patentability, considering the state of flux the law is in.  At the least, you can expect some trouble.  Nevertheless, I am confident that business methods are now and should continue to be patentable, if drafted and prosecuted correctly.

[rts]

The closest I've come to understanding what lay people (and professionals alike) mean by "business method" patents is computer-implemented inventions in which some data somewhere represents money. 

You realize of course that your definition would not encompass Bilski's claim 1? It would be ironic if the case that limited business methods was not actually a business method itself. Or are you proposing a revised definition that would exclude those business methods now confirmed as unpatentable by Bilski?

Class 705 is identified in both the BPAI and CAFC Bilski decisions as being the home of "business methods". Bilski's claim 1 would seem to fall under subclass 37: commodities trading, etc. It's easy to envision commodities trading inventions that would be patentable before and after Bilski.

[JimIvey]

Jim, you are wrong that insignificant post-solution activity is discarded by the Bilski court.  That corollary was not part of the Freeman-Walter-Abele test but in fact was around before Diehr and confirmed by the Diehr Court, as explained in the text of Bilski. The court clearly affirms the use of this corollary on Page 16-17. 

Well, I'll respectfully submit that insignificant post-solution activity was part of the Freeman-Walter-Abele test -- not that it originated there but was an integral part of it.  I stand corrected that Bilski retained the notion.

Here is a blog post about some recent system claim rejections under Bilski: http://bpaiwatchdog.blogspot.com/2009/03/bpai-confirms-101-rejection-of-method.html

Interesting. 

In the method claims, the BPAI indicated that the method could be performed purely in the human mind (perhaps with pencil and paper).  It's entirely unclear to me how one, using only her mind, could "identify[] co-evolving regions in the memory of a target application" wherein the memory is presumably computer memory and the target application is presumably executing in the computer.  I'm inferring that this is pretty clear from the corresponding Spec.  We've got some computer geeks perusing the forums here -- go ahead, without using a machine, identify some co-evolving regions of memory used by an application.  Oh, feel free to use pencil and paper if it helps. 

Abele would have provided good guidance here, if it were still good law.  Using a number that can only be acquired through use of a CAT scan machine implies sufficient extra-algorithmic activity to recite more than just the algorithm itself.

In the Beauregard claims, the BPAI said, "We see no reason why a “computer readable medium” containing “instructions” for the otherwise ineligible method should be treated any differently from the non-statutory method recited in instant claim 1.  Although a “computer readable medium” may nominally fall within the statutory class of “manufacture,”[] claim 10 would effectively pre-empt the abstract idea represented by instant claim 1."

So, if a method that is ineligible solely for not requiring a computer actually does require a computer, that doesn't save it?  Okay, suppose the "instructions" are a simple text document stored on a CDROM such that the computer becomes merely a display device -- a stretch, but I'll go with it for the sake of argument.  The claim didn't include the language that I typically use: "instructions which, when executed by a computer, cause the computer to [preamble stuff] by: [steps] ."

If the claim covers word processing documents with instructions to human beings to do the pencil-and-paper version of an ineligible method, ... okay.  I'll accept that for now as ineligible.

In the system claim, ... wow ... the BPAI gave up all pretense of giving any weight to the fact that the claim recited a machine and treated it as a method -- citing only precedence ruling on method claims.  I'm having trouble grokking the gross misapplication of the law.  Could it be that the influence of Dudas is making its way into the BPAI?

Business method patents cover methods of doing business.

Thanks.  And circular reasoning is reasoning that goes in a circle.  A deep fryer is something that fries deeply. 

Again, given that there is no meaningful categorization in US patent law and never has been (at least at the appellate level -- Federal Circuit and its predecessor courts), I don't have to sweat the lack of a clear definition.

Regards.

[JimIvey]

You realize of course that your definition would not encompass Bilski's claim 1? It would be ironic if the case that limited business methods was not actually a business method itself. Or are you proposing a revised definition that would exclude those business methods now confirmed as unpatentable by Bilski?

Have you read Bilski?

We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court. [footnote omitted]  We rejected just such an exclusion in State Street, noting that the so-called "business method exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method." 149 F.3d at 1375-76. We reaffirm this conclusion.  [footnote omitted]

The Bilski court did not limit "business methods" in any way.  That fact that others might attach the label "business method" to some, but not all, claims that would fail under the Bilski test for Section 101 compliance is utterly meaningless and irrelevant. 

Regards.