Patent Law and Business Methods

A patent gives inventors a legal right to exclude others from making, using, or selling their invention for a limited time. This is based on Congress’ Constitutional power to secure for inventors “exclusive rights to their discoveries.”


To be patentable, an invention must meet several requirements. These include being new and non-obvious. To determine non-obviousness, a court must examine the scope and content of the prior art.

Patentable subject matter

Over the past few decades, patent law has expanded to cover a wide variety of new inventions, including business methods. Traditionally, patents protected tangible scientific inventions like circuit boards, car engines, or heating coils. But today, they’re used to protect a wide range of non-scientific inventions, such as coding algorithms or business practices. The underlying idea behind patents is that the inventor gets a 20-year exclusive right to sell his or her invention, which can be enforced against others who make or use it without a license.

The first requirement for patentability is that the invention be novel. This means that the invention can’t already exist in the U.S. or elsewhere, and it can’t be explained in a publication before the applicant filed his or her application.

Another important requirement is that the invention be nonobvious. This requires that the invention be novel and have a non-obvious advantage over existing technology. The Patent and Trademark Office’s guidelines describe what constitutes non-obviousness, but it’s a complex test.


Claims are a fundamental part of describing the specific invention for which patent protection is sought. They are written in precise language based on statutory requirements and conventions that initially can be difficult to decipher. They are numbered sequentially, with claim 1 usually being the broadest.

A typical claim consists of an introductory phrase that introduces the idea of the invention. It is followed by a transitional phrase that connects the introductory phrase to a list of elements. The drafting of these phrases is extremely important and requires skill and training.

The last phrase is a restatement of what the invention actually does or contains. For example, a claim for a motor vehicle might say “the motor vehicle comprises a fluid coupling that connects the motor to the crank shaft.” Dependent claims are so named because they refer back to an earlier independent claim and narrow its scope. They are typically less valuable than independent claims, but they can provide backup in case the validity of an independent claim is challenged based on inadequate disclosure.

Patentability testing

Patentability testing is the process of determining whether an invention qualifies for a patent. This test is a key step in the patent application process and is performed by the patent examiner. The purpose of patentability testing is to ensure that only legitimate inventions receive patent protection. It also helps reduce the number of patents that are awarded to unmeritorious claims.

To qualify for a patent, an invention must be new and useful. Newness means that the invention is not known or obvious in light of public knowledge. Usefulness means that the invention has a practical application. The invention must also satisfy the best mode requirement, which requires the inventor to disclose the preferred embodiment of his or her invention.

Existing tests for evaluating software patentability give paramount importance to form and little or no importance to function, making the scope of patentable computer programs very narrow. This paper proposes a model that would promote progress in the software industry by introducing a reliable test for granting patents. The model is based on parameters such as form and function to encourage innovation without stifling progress through the grant of silly patents.

Patentability of printed matter

In this case, the Federal Circuit ruled that printed matter is not eligible for patenting under the article of manufacture doctrine. Rather, it must have a distinctive physical structure to be eligible for a patent. The CAFC’s decision echoed the decision in Myriad Genetics, where it was found that gene sequences that are not isolated from their natural environment must be markedly different to be patentable.

The printed matter doctrine is a judicially created exception that prevents the patenting of information content. The doctrine is based on the public policy that information does not deserve the limited time monopoly of a patent. It also protects the integrity of the patent system by ensuring that only true inventions receive protection.

This week the Federal Circuit expanded the printed matter doctrine to include disclosures that are a series of mental steps such as providing information to a medical provider. This expansion is significant because it will allow section 103 challenges to patents to be filed without having to go through an Alice two-step analysis. In addition, it will broaden the grounds for challenging patents at the USPTO.

Patentability of business methods

Business methods have become a subject of much debate in the United States. Historically, such methods could not be patented, but recent court decisions have changed this. However, the rise of business method patents has been largely caused by fundamental industrial and technological changes. These changes have shifted many business fields into branches of engineering.

To qualify for a patent, an invention must be useful, novel and non-obvious. The invention must also be either a process, machine, an object made by humans or machines, a composition of matter, or a new use of any of these. The invention must also be capable of being recited in a clear and concise manner.

A business method patent must meet four requirements to be valid. First, it must be a process that produces a useful, concrete and tangible result. Second, it must be more than an idea – it must produce something concrete that is unique and different from anything else created previously. Finally, it must include some technology item or hardware. The Court in Bilski v Kappos narrowed this requirement by stating that the method must be tied to a particular machine or transform data that is representative of a tangible article.