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Patenting the methods of doing business in the USA

Dec. 15, 2018

The peculiarities of the USA patent legislation is the possibility of obtaining the legal
protection not only for traditional inventions, which mean such subject matters as:
– a process (an action or method that includes the production and technological processes);
– a technical device, an industrial product or an integral part thereof;
– a substance composition (for example, an artificially created chemical compound or a mixture
of the chemical ingredients that are endowed with certain new properties);
– a significant improvement of an already existing industrial product, substance, process,
but also for the methods of doing entrepreneurial activities (business).
When considering the issues of patentability of the inventions in the field of the methods
of doing business, currently one can find many publications that state that the USA has allowed
patenting the inventions in the field of the methods of doing business. However, what is a
method of doing business? This is a certain sequence of the actions in a specific field of activity,
that is, this is a method by nature. However, any method, whatever field and sphere of activity it
belongs to, shall be according to the patent legislation in different countries such subject matter
as an “invention,” for which a patent can be granted, if it satisfies the established criteria of
patentability.
The main legal bases of patentability of the invention in the USA are:
– Article 35 of the U.S.C., Paragraph 101: a subject matter of the patent rights and utility;
– Article 35 of the U.S.C., Paragraph 112, Subparagraph 1: adequacy of a disclosure, a
written description and the best embodiment;
– Article 35 of the U.S.C., Paragraph 112, Subparagraph 2: the claims definiteness
(clarity);
– Article 35 of the U.S.C., Paragraph 102: novelty;
– Article 35 of the U.S.C., Paragraph 103: obviousness (an inventive step).
At the same time, the claimed method relating to a business idea should either be
associated with a specific machine or apparatus, a product, or must convert a particular product
into a different state in such a manner, so that to be a fundamentally patentable solution
according to Article 35 of the U.S.C., Paragraph 101.
Regarding the methods of doing business, it has not been recognized in course of any
precedents for the methods of the type “buy two, get the third one free of charge” to become
suddenly patentable. Thus, the method of doing business, like any other one, is primarily a
method that can be protected only as an invention.
Thus, the methods of doing business are no exception to the statutory requirements for
patenting an invention: novelty, inventive step, and industrial applicability.

When making a decision on patenting such technical solution, as a method of doing business, the
applicant must take into account the following cases, which will clearly indicate that the method
of doing business cannot be patented:
– The claimed invention should not deal with the use of the laws of nature;
– If the business idea is abstract, that is notional, not related to a direct perception of the real
world, for example, such as mental processes, mathematical algorithms, scientific principles;
– The invention must not contain scientific facts;
– If the claims only present a problem to be solved;
– If the general concept lacks a possibility of its implementation;
– If the mechanism of implementation of the steps according to the claimed invention is
subjective or cannot be perceived;
– The invention must not be simply a presentation of the general concept.
The examples of the general concepts can include:
– The basic economic methods or theories (for example, hedging, insurance, financial
transactions, marketing);
– The basic legal theories (agreements, the settlement of disputes, the legal rules);
– The mathematical concepts (algorithms, spatial relationships, geometry);
– The mental activities (the formation of judgments, observations, assessments or opinions);
– the interpersonal interactions or relationships (conversations, rendezvous);
– The pedagogic concepts (for example, memorization, repetition);
– The human behavior (for example, exercises, wearing clothes, following the rules or
instructions);
– Training in “How one should do business.”
For better understanding of what can be protected as a method of doing business, we shall
give a patent of the USA as an example: US 8656364 B1, published on 18.02.2014. “System and
method for enforcement of business rules using static analysis.” The method for enforcement of
business rules in a computer programme using static analysis is protected by patent US 8656364
B1. The method includes the preservation of multiple business rules corresponding to multiple
business processes representing the activity of the enterprise; the analysis of the representation of
the business processes in a computer programme for creating a parse tree; the extraction of the
execution paths from the parse tree; the creation of the charts of the control flows and the charts
of the data flows from the extracted execution paths, in which the generated charts of the control
flows and the charts of the data flows sticking to one or more preserved business rules; following
the generated charts of the control flows and the charts of the data flows; the use of the said one

or more preserved business rules to the generated charts of the control flows and the charts of the
data flows; and the message on whether any of the used rules has been violated.
Therefore, the issue of patenting business ideas, so-called MDB (Methods of doing
business) is debatable in the USA itself, too. It is believed that patenting abstract ideas (which
are in many cases namely business methods) is the reason for the emergence of so-called patent
trolls, who patent these ideas and then turn to large corporations that use the business ideas to
demand compensation.  Bearing in mind that the process of patenting is quite expensive in the
USA, such “investment” of money should be considered as unproductive.  
In practice, it is extremely difficult to obtain a patent for a business method in the USA, if
the attachment does not include a new exclusive algorithm. In the USPTO, there is a separate
search department for the applications for business methods, and the applications undergo a
complex and a fairly deep enough examination process. If you follow the link to the USPTO
website, you can learn more about the peculiarities of the procedure for patenting business
methods: https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-
applications/utility-patent/patent-business#step2

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Author of article

Ludmila Lisovskaya

Ludmila Lisovskaya

Patent Specialist / Chemical Specialist