The US Patent Board Lowers Bar for Patenting Business Methods

In a precedent setting decision, Ex Parte Lundgren, the United States Board of Patent Appeals and Interferences (Patent Board) has opened the field wider for business method patents. In the Lundgren decision, the Patent Board reversed the USPTO-imposed "technological arts" test that had been used to narrow somewhat the issue of these patents. The "technological arts" requirement was that the method had to be sufficiently complicated that a person could not perform the method in their head or, alternatively, that the process required a computer or another apparatus to perform it. This test was imposed in part to conform USPTO practice with the non-binding decision in Ex Parte Bowman, 61 USPQ 2d 1665 (BPAI 2001). However, in Ex Parte Lundgren, Appeal No. 2003-2088 (BPAI 2005), the Patent Board ruled by a 3-2 split decision that the "technological arts" test should not be used, as there was no requirement for it in law. Instead, the majority held that the test is simply whether a claimed method "produces a useful, concrete, tangible result" without being a "law of nature, physical phenomenon or abstract idea". The dissenting decisions both argued strongly against this holding since, in their view, it would set the bar for patentable subject-matter too low. In his dissent, Judge Smith argues that the US Constitution gives Congress a mandate to grant patents that encourage the development of useful arts, and consistent with that mandate the granting of patents should be limited to inventions that are tied to science or technology. "There is no science or technology associated with the claimed invention. …I find it ludicrous … to think that the writers of the Constitution would have found the idea of [a method for] providing compensation to an executive … to be something that would qualify for a patent." In his 77-page dissent, Judge Barrett invites "guidance from our reviewing court, the US Court of Appeals for the Federal Circuit". The USPTO has also recently released Interim Guidelines for examiners, which includes a detailed treatment of patentable subject-matter issues. For the full text of the Ex Parte Lundgren case, visit: http://www.uspto.gov/web/offices/dcom/bpai/prec/2003-2088.pdf For an article on the topic, see Pamela A. MacLean, The National Law Journal, 10-25-2005: http://www.law.com/jsp/pc/LawArticleIP.jsp?id=1130157956078 Also see Patent Trademark & Copyright Journal® Volume: 70 Number: 1741 October 21, 2005 http://ipcenter.bna.com/pic2/ip.nsf/id/BNAP-6HDJ2L?OpenDocument More on business method patents at: http://en.wikipedia.org/wiki/Business_method_patent USPTO Interim Guidelines are available at: http://makeashorterlink.com/?L2584202C Summary by: James Kosa