This gives practitioners some guidance on claiming strategies for software and business method related inventions and clarifies the notion that the Bilski decision does not directly impact claims that are drafted as articles of manufacture. The court followed the analysis set forth in In re Nuijten, 500 F.3d 1346 (Fed. Cir., 2007), which considers the four statutory classes for a signal, and bases the determination of statutory subject matter on that basis. The language from the opinion is as follows:

“It has been the practice for a number of years that a “Beauregard Claim” of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. (Ibid.). Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir., 1994). In view of the totality of these precedents, we decline to support the [nonstatutory subject matter] rejection under 35 U.S.C. § 101.”

The claim at issue in the Ex parte Bo Li decision involving Application No. 10/463,287 is copied below for reference:

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in response to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

By Daniel Cotman

Under the law established by the State Street case it used to be that claims for business methods or software processes were patentable if it could be show that what is claimed accomplished a “useful, concrete and tangible result.” In this recent ruling the Federal Circuit declared the State Street inquiry to be inadequate and reaffirmed that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply. Thus the case that ushered in the era of business method patents has been benched and is not expected by most legal scholars to be resurrected.

The true impact of the Bilski ruling on both pending applications and issued patents has yet to be felt, but the court made it clear that despite the naysayer’s business methods and software patent remain patentable. Under this new test, best practices for all pending patent applications is to conduct a thorough review of all method patents to determine if the claims will pass scrutiny under Bilski. While it remains unclear “what constitutes sufficient physical transformation or machine-implementation to render a process pantentable,” a review of the case law relying on the “machine-or-transformation” test that was first enunciated by the Supreme Court in the Benson case shows that the following basic principles should be adopted as best practices:

By drafting using one or more of these best practices claims directed to business methods and software patents remain patentable subject matter.

By: Daniel Cotman and Elaine Cruz