Patent Attorney / Chemical Specialist
Patenting the methods of doing business in the USA
The peculiarities of the USA patent legislation is the possibility of obtaining the legalprotection 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 mixtureof 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 methodsof doing business, currently one can find many publications that state that the USA has allowedpatenting the inventions in the field of the methods of doing business. However, what is amethod 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 itbelongs to, shall be according to the patent legislation in different countries such subject matteras an “invention,” for which a patent can be granted, if it satisfies the established criteria ofpatentability.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, awritten 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 beassociated with a specific machine or apparatus, a product, or must convert a particular productinto a different state in such a manner, so that to be a fundamentally patentable solutionaccording to Article 35 of the U.S.C., Paragraph 101.Regarding the methods of doing business, it has not been recognized in course of anyprecedents for the methods of the type “buy two, get the third one free of charge” to becomesuddenly patentable. Thus, the method of doing business, like any other one, is primarily amethod that can be protected only as an invention.Thus, the methods of doing business are no exception to the statutory requirements forpatenting an invention: novelty, inventive step, and industrial applicability.
When making a decision on patenting such technical solution, as a method of doing business, theapplicant must take into account the following cases, which will clearly indicate that the methodof 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 realworld, 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 issubjective 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, financialtransactions, 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 orinstructions);– Training in “How one should do business.”For better understanding of what can be protected as a method of doing business, we shallgive a patent of the USA as an example: US 8656364 B1, published on 18.02.2014. “System andmethod for enforcement of business rules using static analysis.” The method for enforcement ofbusiness rules in a computer programme using static analysis is protected by patent US 8656364B1. The method includes the preservation of multiple business rules corresponding to multiplebusiness processes representing the activity of the enterprise; the analysis of the representation ofthe business processes in a computer programme for creating a parse tree; the extraction of theexecution paths from the parse tree; the creation of the charts of the control flows and the chartsof the data flows from the extracted execution paths, in which the generated charts of the controlflows and the charts of the data flows sticking to one or more preserved business rules; followingthe 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 thedata 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 doingbusiness) is debatable in the USA itself, too. It is believed that patenting abstract ideas (whichare in many cases namely business methods) is the reason for the emergence of so-called patenttrolls, who patent these ideas and then turn to large corporations that use the business ideas todemand compensation. Bearing in mind that the process of patenting is quite expensive in theUSA, 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, ifthe attachment does not include a new exclusive algorithm. In the USPTO, there is a separatesearch department for the applications for business methods, and the applications undergo acomplex and a fairly deep enough examination process. If you follow the link to the USPTOwebsite, you can learn more about the peculiarities of the procedure for patenting businessmethods: https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/utility-patent/patent-business#step2