Patent Litigation Lawyer

Dennis Crouch has an interesting post today regarding the In re Ferguson appeal that is presently before the federal circuit. In this case, the appellant was denied a patent by the PTO on account of the fact the PTO decided the application didn’t contain a claim that was “useful, concrete, and tangible result” or “transformed” something into a new physical state.  The claim related to a business method patent, specifically a “concept of a marketing company devoted to selling/marketing products produced by other companies in return for a share of their profits.”

There is an ongoing debate as to whether business methods should be patentable, and one the PTO will need to address soon.  Consider a business method patent is essentially that patent of a business plan, and would appear to be a far cry from the technical language most people associate with patents.  Also consider business method patents have come under attack recently, especially with companies claiming business method patents are not readily susceptible to prior art challenges, as most business plans are confidential, or otherwise not published or made publicly available.

Separately, the United States Supreme Court signaled last February in Microsoft v. At&T its recognition that software has never been held to be patentable.  The software industry has been rabidly anti-patent, arguing that the long process of obtaining patents would stifle technical innovation, and decentralized industries simply are not good candidates for patentable subject matter.

As with everything related to the practice of law, we see shades of gray.  There are certainly business methods that would be too obvious to be patentable (e.g. buy low sell high), but one can imagine a method that is so unique as to qualify for protection (perhaps the the initial Overture.com model of tying search results to advertising dollars).  The broad strokes of eliminating all software and all business methods will, of course, trigger the law of unintended consequences.

Armi Easterby