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By Doug Weller

A business method is patentable provided the business method satisfies the criteria for novelty and nonobviousness and is more than a mere “abstract idea”.

The U.S. Supreme Court confirmed the patentability of business methods in Bilski et al. v. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office (Bilski).

What the one hand gives, however, the other can take away. In June 2014, the U.S. Supreme Court in Alice Corp. Pty. Ltc. v. CLS Bank International (Alice), tightened the legal test for what could make a business method patentable. The court maintained that a business method may be considered a mere abstract idea and therefore unpatentable. Implementing such a business method by a computer used in a conventional manner is not sufficient in itself to make a business method patentable.

What can an inventor do to prevent a business method being rejected as a mere abstract idea implemented by a generic computer performing generic functions? One suggestion is to include details of the underlying hardware system when describing a computer implementation of a business method. Are there multiple hardware entities involved (e.g., a server, a personal computer, a smart phone)? Is there something unique in the way the separate hardware entities communicate with each other? Adding such details, while no guarantee of patentability, gives greater flexibility to argue that the business method is more than just an abstract idea implemented on a generic computer performing generic functions.

Please note: This article is written for general information only. The information does not constitute legal advice, solicitation or advertising. The information provided does not create an attorney-client relationship. Liability for any action taken or omitted based on the information herein is specifically disclaimed. If you need legal assistance, you are advised to contact an attorney.

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