Patent Law

The following is excerpted from a blog post by Erik Sherman published by BNET on Dec 22, 2009:

Industries, particularly high tech, may be waiting for the U.S. Supreme Court decision, expected this coming spring, in the Bilski case to decide some fundamental questions of when you can patent business methods. But in the meantime, there?s a newly published decision from the Board of Patent Appeals and Interferences that establishes a new test to determine whether a machine or manufactured article that depends on a mathematical algorithm is patentable. The ruling is a big deal because it?s one of the few precedential decisions that the BPAI issues in a given year, and it will have a direct impact on patents involving computers and software.

For a claimed machine (or article of manufacture) involving a mathematical algorithm,

1.)  Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., ?not a mere field-of-use label having no significance?)?

2.)  Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either ?in all fields? of use of the algorithm or even in ?only one field??



If the machine (or article of manufacture) claim fails either prong of the two-part inquiry, then the claim is not directed to patent eligible subject matter.

Although the decision came out in August, it wasn?t until this month that it became precedential, and so applicable going forward to other patent cases.

Read the full post here.