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[JimIvey]

I guess what I am not too clear about is how did we get from Bilski's hedge fund, basically a pure business method, to software?  Is this just the fact that some business methods can be implemented on CRM?  So, the supremes figured they would tackle that too?

What's a business method?  And please don't tell me that it's a method of doing business. 

It seemed the supremes said pure business methods are out as abstract, ...

I think they said, rather explicitly, exactly the opposite.  Or, at least that there is no exclusion from Section 101 for "business methods", whatever that term means.

but if you have one that can be implementated on a CRM and it falls close in Dier meeting the MT test (not sure how far away you can be), then you are probably ok.  But if you get too close to Flook and Benson you are toast.

Yeah, that's pretty much it.  There's a limit of "too abstract" and it lies somewhere between Flook and Benson (and now Bilski) on one side and Diehr on the other. 

For what its worth, I think Bilski's technology is more abstract than either Flook's or Benson's, so very little is illuminated by the decision -- other than Benson and Flook are reaffirmed as being outside of Section 101 (I thought that might change in the 21st Century,  but it's not over yet) and the silly disregard for SCt precedent (as well as its own) by the Fed Cir was soundly rebuked.

Regards.

[patentsusa]

I haven't yet seen a useful definition, in a statute or rule, of a business method.  In my mind, a pure business method is a method that does not use a computer or machine and that involves stocks, money or other financial instruments, or insurance.

If you have something that can be implemented in software, it isn't very hard to meet the machine or transformation test.  If you have no software, and can't come up with a software implementation, I guess you have to invent a transformation.  That would be easier than figuring out what else complies with 101.

[JimIvey]

I haven't yet seen a useful definition, in a statute or rule, of a business method.  In my mind, a pure business method is a method that does not use a computer or machine and that involves stocks, money or other financial instruments, or insurance.

I used to think of "business methods" as claims where you'd have to read contracts to see if a process infringes -- very similar.

However, since the Federal Circuit and now the Supreme Court have both said, very explicitly and unambiguously, that there is no statutory subject matter exclusion for "business methods", whatever they may be, I don't even bother to come up with a definition.  The term "business method" is meaningless (almost) in patent law and I try to spend my time worrying about parts of patent law that matter.

I still come across people who toss the term around as if they know what it means.  Whenever I ask what it means, I get, "You know, a method of doing business."  Yes, and a generator is a thing that generates, and an alternator is a thing that alternates, and a compressor is a thing that compresses, etc.

Regards.

[TataBox]

I haven't yet seen a useful definition, in a statute or rule, of a business method.  In my mind, a pure business method is a method that does not use a computer or machine and that involves stocks, money or other financial instruments, or insurance.

I used to think of "business methods" as claims where you'd have to read contracts to see if a process infringes -- very similar.

However, since the Federal Circuit and now the Supreme Court have both said, very explicitly and unambiguously, that there is no statutory subject matter exclusion for "business methods", whatever they may be, I don't even bother to come up with a definition.  The term "business method" is meaningless (almost) in patent law and I try to spend my time worrying about parts of patent law that matter.

I still come across people who toss the term around as if they know what it means.  Whenever I ask what it means, I get, "You know, a method of doing business."  Yes, and a generator is a thing that generates, and an alternator is a thing that alternates, and a compressor is a thing that compresses, etc.

Regards.

Maybe I am missing the point.  My definition is in line with what patensusa has indicated.  I am not sure how you say the term "business methods" does not matter.  It is a way of categorizing certain innovation.  It is the same as using the term "web analytics."  Is there overlap with other areas?  Sure.  Further, Congress has specifically provided for that term in 273 and 271.

It seemed the supremes said pure business methods are out as abstract, ...

I think they said, rather explicitly, exactly the opposite.  Or, at least that there is no exclusion from Section 101 for "business methods", whatever that term means.

No they didn't.  Right. They didn't categorically exclude that term, but in essence tailored innovation that falls within that category to meet the meet however the MTT is applied.  Either in relation to process or being abstract.  I am not sure which, though according to ex parte poundler or powler, it seems to be the later in the USPTO.

[JimIvey]

Maybe I am missing the point.  My definition is in line with what patensusa has indicated.  I am not sure how you say the term "business methods" does not matter.  It is a way of categorizing certain innovation.  It is the same as using the term "web analytics."  Is there overlap with other areas?  Sure.  Further, Congress has specifically provided for that term in 273 and 271.

The term is useless because it has no well-accepted definition.  I do e-commerce patents all the time, but I don't call them "business method" patents.  "e-commerce" has an adequately well-understood definition that it seems useful.  When people say "business method", I have no idea what they think it means.

But, still (potential) clients come to me and ask for a "business method" patent.  They don't ask for a "web analytics" patent, or an "e-commerce" patent, or a "basic mechanical" patent.  The term "business method" is understood, incorrectly, by many to mean something special in patents -- perhaps second only to "provisional" in being misunderstood and misused.

As for section 273, that's why I said "almost."  Still, try to find a helpful definition for the term. 

Here's what the Court in Bilski said about that:

The Court is unaware of any argument that the “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of “method” excludes business methods. Nor is it clear how far a prohibition on business method patents would reach, and whether it would exclude technologies for conducting a business more efficiently. See, e.g., Hall, Business and Financial Method Patents, Innovation, and Policy, 56 Scottish J. Pol. Econ. 443, 445 (2009) (“There is no precise definition of . . . business method patents”).

It seemed the supremes said pure business methods are out as abstract, ...

I think they said, rather explicitly, exactly the opposite.  Or, at least that there is no exclusion from Section 101 for "business methods", whatever that term means.

No they didn't.  Right. They didn't categorically exclude that term, but in essence tailored innovation that falls within that category to meet the meet however the MTT is applied.  Either in relation to process or being abstract.  I am not sure which, though according to ex parte poundler or powler, it seems to be the later in the USPTO.

Okay, I'm not following here.  I said there's no categorical exclusion for business methods and you disagreed, saying there's no categorical exclusion for business methods.

When an application is designated as being for a "business method", what significance does that designation have (outside of Section 273)?  I can't think of any in the US.  I don't think adding "pure" helps.

I guess if "pure business method" is defined as some sort of method of doing business that is claimed so abstractly as to fall outside of Section 101, that might make sense.  But, I don't see any utility in such a term.  If a claimed invention is claimed too abstractly, it falls outside of Section 101 -- pure and simple.  "Business method" just muddies the issue.

Regards.

[patentsusa]

The term "business method patents" confuses a lot of people.  I have many clients come in with what they think are business method inventions who are concerned with Bilski and statutory issues and they invariably have what I'd consider to be a software invention that will easily pass the machine-or-transformation test.

[Yak]

The PTO recently published a memorandum dated July 27, 2010 giving additional guidance related to Bilski. 

http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf

The memorandum includes a list of factors weighing in favor of patent subject matter eligibility and a list of factors
weighing against patent subject matter eligibility.

[Robert K S]

I rather like all that this memorandum has to say with regards to disincentivizing the lynchpinning of rejections of claims solely on (sketchy) 101 bases when there are 102/103 rejections to be made.  Is there anyone that doesn't see this as a nice step forward for the Patent Office?

[khazzah]

Is there anyone that doesn't see this as a nice step forward for the Patent Office?

I have seen some blog posts/comments that don't like the guidelines. The only explanation I recall is "the test is too complicated". 

Personally, I see this as a step forward because it tells Examiners to put analysis on the record. That gives me something to work with/argue against. What I can't work with is "hedging is abstract". [In what way?] Or "a computer is not a particular machine" [why not?]

disincentivizing the lynchpinning of rejections of claims solely on (sketchy) 101 bases when there are 102/103 rejections to be made. 

I haven't been seeing that in my practice, but yeah, I'd be annoyed if it happened to me.

Now, if only we could get the BPAI to rule on the merits rather than vacating because the claims are barred at the threshold by 101. [One of my hot buttons, as you guys know.]
 

[Isaac]

Now, if only we could get the BPAI to rule on the merits rather than vacating because the claims are barred at the threshold by 101.

I concur.

Unfortuately, the new guidelines are going to introduce difficulty in predicting outcomes at the board.  That may mean an increase in situations where the examiner gets second guessed.   Typically if the examiner believes that the claims comply with 101, there won't be any factor analysis on the record.

[JimIvey]

Now, if only we could get the BPAI to rule on the merits rather than vacating because the claims are barred at the threshold by 101.

I concur.

Hear!  Hear!

There's that pesky "compact prosecution" again.  Let's wait in the BPAI queue to resolve Section 101.  Then, let's wait in the BPAI queue to resolve Section 112.  Then, ....

Regards.