USPTO Releases Examiner Guidance on Business Process Subject Matter Eligibility under 35 U.S.C. Section 101
Professor Crouch has published a May 15, 2008 memo to U.S. patent examiners that was released at the last Business Method Partnership meeting. The memo is intended to help Examiners determine when a claimed business method is eligible for patent protection as a statutory process under 35 USC 101:
"Based on Supreme Court precedent and recent Federal Circuit decisions, the Office’s guidance to examiners is that a Section 101 process must (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or material) to a different thing. If neither of these requirements is met by the claim, the method is not a patent eligible process under Section 101 and should be rejected as being directed to non-statutory subject matter.
An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps. Thus, to qualify as a Section 101 statutory process, the claim should positively recite the other statutory class (the thing or product) to which it is tied, for example, by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter being transformed, for example by identifying the material that is being changed to a different state."