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Even after a lot of reading and learning, I am still confused, how do I determine whether my business process is patentable?

Los Angeles, CA |

I have an idea that is a way to do business online or through an app that I was unable to find any evidence of being done before (through both an online search and brief patent search) . I'm fairly serious about obtaining a patent to protect me if I implement my idea and bigger/other companies end up copying it and are in a better position to execute it. Most of the exact business process has been done in person and sometimes done online for major companies, but the business process hasn't been done with the likely ease and convenience of doing it for everyday consumers online. Examples, especially of websites that have business process patents would be very helpful. Thanks so much in advance for any help.

Attorney Answers 8

Posted

The law of business method patents and patent eligibility (35 USC 101) is still in flux, even after two Supreme Court decisions (i.e., the Bilski and Prometheus cases). More recently, the Federal Circuit in CLS Bank International v. Alice Corp. Pty. Ltd., 685 F.3d 1341 (Fed. Cir. 2012) addressed a claim regarding a computer system for reducing settlement risk for business transactions. Two judges found the claim to be patent eligible because the computer limitations "play a significant part in the performance of the invention." One judge dissented, arguing that the claims merely consist of a well-known and abstract idea that is implemented using a computer.

Nonetheless, a general rule of thumb is that if you can performed the claimed method using your head with a pencil and paper, it is probably too abstract to be patentable. Implementing the claimed method via a computer is not a magic patent-eligibility card. You need to have a patent attorney sit down and analyze what you want to claim as your invention.

This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.

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Posted

You should speak to a patent attorney and discuss your idea with that person and get the feedback you'll need. It won't really be possible for get more detail here.

This is AVVO, a place for users to obtain general legal information to general legal questions. I am glad to help you in any way I can, within those limits. I wish to make clear I am only communicating with you for the sole purpose of exchanging such general information, and nothing more. It is not legal advice, which I can not provide because among other reasons I know few of the necessary details of your situation. I do not purport to represent you in any way, shape or form. Of course, if you would like to seek out my services, and if you are a NY resident, I will probably not put up very much resistance but representation would still necessitate a signed retainer agreement between yourself and I. Thank you.

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Posted

Unless your reading and learning includes law school and many years practicing law and even judging cases, you're not going to be able to make any determination about anything like this. Patents for business methods are a hot issue now due to the Supreme Court's opinion 2 years ago in In re Bilski ruling, and that decision hasn't been in place long enough for there to be a clear guideline on how patentees and their lawyers should proceed. Please see the link below on the Bilski line of cases and their arguments.

One thing's for sure -- you can't do this without professional help, and you shouldn't even try. This site doesn't count as "professional help" --you need to hire your own patent lawyer.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

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Posted

You can't do this without retaining intellectual propety counsel to conduct a patent clearance analysis. Further, you should not assume that patent protection is the best and most efficient way to protect your invention. Finally, you should not assume that your idea is patentable---we do not provide intellectual property for mere ideas----we provide intellectual property rights for tangible inventions or works of art, music, film, authorship----you have to do the hard work of showing how your invention works and showing that it is viable before you can get a patent. Quite obviously, you need to retain intellectual property counsel. Otherwise you are spinning your wheels.

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Posted

Part of the new law changes requires the director to implement a Transitional Program for Covered Business Method Patents. They are going to enable a special "post-grant review
proceeding" in order to facilitate the challenge of business method patent claims.

I have much to say about the sudden history of business method patents, far too much to exceed the "characters remaining" here.

Needless to say BMP's will be under attack.

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Curt Harrington
Certified Tax Specialist -- State Bar of California Board of Legal Specialization
Electrical-Chemical-Mechanical Patent (Intellectual Property) Attorney
(562) 594-9784
http://patentax.com
About Curt: http://patentax.com/curt/index.html
Visit the Library: http://patentax.com/library/

Curt Harrington Patent & Tax Law Attorney Certified Tax Specialist by the California Board of Legal Specialization PATENTAX.COM This communication is general information and not legal advice, and does not create an attorney-client relationship. This communication should not be relied upon as any type of legal advice. Please note that no attorney-client relationship exists between the sender and the recipient of this message in the absence of either (1) a signed fee contract and (2) remission of an agreed-upon retainer. Absent such an agreement and retainer, I am not engaged by you as an attorney, nor is any other member of my law firm.

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Posted

Attorney Koslyn is right. The Bilski decision of the Supreme Court in June 2010 put a new perspective on what kinds of business-related methods are eligible to be considered for patenting, regardless of how novel and non-obvious they might be.

And the foes of such patents have gotten a bit of headway in Congress, which passed the America Invents Act ("AIA"), signed by Pres. Obama last September 16. Since "business method" patents seem to be especially suspect, Congress created a special interim procedure to challenge such patents under the AIA, which happens to go live starting this Sunday. Says the US PTO's website:

"The transitional program for covered business method patents (TPCBM) is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. TPCBM proceedings employ the standards and procedures of a post grant review, with certain exceptions. For example, for first to invent patents only a subset of prior art is available to support the petition. Further, a person may not file a petition for a TPCBM proceeding unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent. The procedure for conducting TPCBM review will take effect on September 16, 2012, but only applies to covered business method patents. The program will sunset for new TPCBM petitions on September 16, 2020."

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.

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Posted

The Bilski case established that business methods are still entitled to a patent if they meet the "machine or transformation" test, meaning that the business method has to be tied to a machine (e.g., a special purpose computer) and/or some transformative steps have to be involved. Thus, if the budget permits and the business method appears to have commercial value, it is still generally wise to apply for a utility patent and possibly for a design patent (e.g., user interface), even in this somehow uncertain environment. Hope this general info helps.

This is general information only. For legal advice, based on your specific facts, an attorney needs to be hired first.

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Posted

At present, the U.S. Patent and Trademark Office will allow a patent application (assuming there is novelty) as long as there is some hardware in the claim, such as a processor. Having hardware should mean that you pass the "machine-or-transformation" test that the Supreme Court in the Bilski case said was one possible test, but not the only test. Lower courts are holding invalid many cases that should pass this test. The best solution is to come up with a hardware block diagram. Most software can also be implemented in digital logic circuitry and the courts will have a hard time saying that digital circuitry is not capable of being patented.

On the other hand, if you have designed a website to implement a well known manual process, you may have a hard time convincing the patent examiner that you have done something that is non-obvious.

Also be aware that by merely obtaining a patent, nobody is going to be beating down your door to try to license your invention from you. Obtaining a patent only gives you the ability to sue infringers. That is not a trivial or inexpensive project.

You certainly need to hire someone to help you with your specific situation.

No attorney-client relationship exists until a representation agreement is signed and an advance fee is paid. Do not make any decisions based on this advice without first retaining a qualified attorney and describing your situation in detail. These are just general answers to general questions, for discussion purposes, to encourage you to obtain legal counsel, and to raise issues you may not have considered.

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3 comments

Gerry J. Elman

Gerry J. Elman

Posted

What Deepak is discussing in paragraph 1 is a strategy in seeking to address the barrier to patentability arising from the "patent-eligible subject matter" requirement of sec. 101 of the patent law. He helpfully points out that it may not be sufficient just to convince the Examiners at the patent office, because a granted patent can nevertheless be challenged in court. And as I pointed out in my separate answer, there is a new procedure available starting today, wherein a granted "business method" patent may under certain circumstances be challenged at the patent office as well. Then, in paragraph 2 of his answer, he reminds us of another hurdle to patentability. Even if the claim is written to define patent-eligible subject matter, the claimed invention must also be determined to satisfy section 103 of the patent law, namely that it would not have been obvious, at the time the invention was made, to a person having ordinary skill in the pertinent field, with access to all the prior art.

Asker

Posted

Thank you both for your helpful insight. I do have the means and intention to hire an attorney if the time is right to file the patent, but as a small business, I'd like to figure out the patent-ability of my business idea because it does not seem to make sense to proceed with this time and expense of a patent if I really don't have a case at all for one. Unfortunately it doesn't clearly pass the hardware/machine test, but I believe that doesn't exclude me from getting a patent. My idea would allow customers to order a specific service anonymously for free through the software/app/website that they were only previously allowed to get by calling someone, going through a lengthy process, and often paying for it. While I'd probably try to emphasize the software portion and "digital logic circuitry" that Deepak said, the prior sentence doesn't seem to pass Derek's paragraph #2 on non-obviousness; however, my case for non-obviousness is that the idea has never been done online. The process is sometimes done, but my implementation of the idea would be a change in the industry from the way the process and business is done. Any help will be very appreciated. I do want it to be patentable but I don't want that to get in the way of seeing the truth of my case and don't want to be seduced incorrectly believe it will be. Do I just have a business idea or do I have a patentable business idea?

Gerry J. Elman

Gerry J. Elman

Posted

It would be nice if the answer could be a binary YES or NO. But these days, the results from the patent office are not clearly predictable, and for those matters that pass that hurdle, the further hurdles of an administrative agency trial and then three layers of potential court litigation (federal district court, Court of Appeals, and Supreme Court) mean that the question is a mystery wrapped up in an enigma. Think of it as a matter best addressed by "fuzzy logic." Find one or more patent attorneys you can communicate with and feel you trust, disclose the invention confidentially, and have a discussion about strategies for drafting claims and the odds of succeeding at various levels of pushback. Get estimates of how much the work at each of the stages would be likely to cost. And estimate the value to your business of the rights provided by such a patent. Then make a business decision based on expected present value.

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