If You Want to Protect Your Business Method, Reframe It as a Technical Invention

“Protecting groundbreaking business method innovations is a challenge. Getting meaningful patent protection on the early stage technical inventions required to implement a business method may be essential for the ultimate success of your ideas.”

https://depositphotos.com/153672170/stock-photo-businessman-using-smartphone.htmlThe most effective way to protect an inventive business method is with a patent on a technical invention. Ever since the U.S. Supreme Court’s 2014 Alice decision, the U.S. courts and the U.S. Patent and Trademark Office (USPTO) have consistently held that you can’t patent a business method by itself. The Alice decision overturned several related business method patents as being nothing more than an attempt to patent a fundamental economic process. Lower court decisions have since affirmed that “no matter how groundbreaking, innovative or even brilliant” a business method might be, you still can’t patent it. The only way to use patents, therefore, to protect business method inventions, is to patent the technological inventions required to make the business methods work. These inventions will be patentable since they will “improve the functioning of the computer itself.” See Buysafe, Inc., v. Google, Inc. 765 F.3d 1350 (2014) citing Association for Molecular Pathology v. Myriad Genetics, Inc., ___ U.S. ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013).

Identifying the Technological Invention

One of the first steps on the road from an initial concept to a commercial product is the building of a working prototype. For a computer implemented business method, this often means hiring a developer to build the front end and/or the back end of a proof-of-concept app. Building the app is fertile ground for making technological inventions that can be patented. The developers might encounter performance problems, database security issues, data quality issues, or maybe even basic conceptual issues of how to implement the business method itself. There are also design issues that come up related to the user interface that must be solved.

The Importance of Technological Language

When describing these technical inventions to your patent attorney/agent, it’s important to use technological language. If you use technological language, then the patent attorney/agent will draft the patent application as an improvement to computer technology. It will then be assigned to a computer technology art unit at the USPTO, where the patent examiner will have a relatively easy time understanding that you are improving the functioning of the computer itself and not trying to patent a fundamental economic process. If, on the other hand, you use business method language to describe the technological invention, the patent office will classify the patent application as a business method. It will then be much more difficult to show the patent examiner that the invention is directed to an improvement in the functioning of a computer and not an attempt to patent the fundamental economic process.

This doesn’t mean that you leave the business method out of the patent application. You still need to describe it to show at least one useful application of the technological invention. It is not, however, the focus of the application.

If you are not familiar with the technological language you should use to describe the invention, you can review other technological patents in the same field as the invention. This is a good idea in any event, since it will help make sure you are not trying to patent something that’s already been done before. Table 1 below shows some typical technology fields, sample titles, key words and formal class numbers for computer-based technologies that are often used to implement business methods.

If there is a class that is especially appropriate for your invention, you can scan through a couple of patent titles in that class to build the vocabulary you need to describe the invention. The patent office will appreciate you using the language of a specific class since it makes their job easier in deciding to which art unit they should send a patent application.

Table 2 below shows example language and vocabulary you do not want to use to describe your technological invention. These are some of the more popular business method fields along with sample titles and keywords associated with their formal USPTO class/subclasses.

It’s OK to use these key words to describe the business method within your patent application, but they should not be used to describe the technological invention itself.

Issues with Using Technological Patents to Protect Business Method Inventions

Many inventors are concerned that if they can’t patent their business method directly and if they can only patent the technological inventions necessary to carry out the business method, then it will be too easy for competitors to get around the patents. This is a legitimate concern. The best way to address it is to see just how generic you can make the technological invention. If it is generic enough without sacrificing its technical nature, you should be able to get meaningful patent protection.

Another issue that inventors are concerned about is if they are only patenting what the computer is doing, they might not be able to tell if there is infringement. This is where the strategic guidance of a patent attorney/agent is important. For example, infringement of a back-end innovation, such as a novel database structure, may be very difficult to detect. It may be best to keep those innovations a trade secret. Infringement of a front-end innovation, such as a novel graphical user interface (GUI), may be much easier to detect and much harder to keep a trade secret. That would indicate that patent protection is the best way to go.

Protecting groundbreaking business method innovations is a challenge. The current legal and political climate make it very difficult to directly patent the business method itself. Patenting the technical inventions that are necessary for the practical implementation of the business method, however, is much more promising, especially for innovators seeking venture funding. Getting meaningful patent protection on the early stage technical inventions required to implement a business method may be essential for the ultimate success of your ideas.

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Join the Discussion

9 comments so far.

  • [Avatar for concerned]
    September 9, 2019 09:04 am

    Received today the examiner’s response to our PTAB appeal. Every argument advanced by the examiner is prefaced by the term “abstract idea.”

    The examiner has provided no evidence or court case where the tracking of the parent of an adult is a long standing practice in commence in my field or any field. The tracking of a parent of an adult cannot be said to be “abstract” as a matter of law, there is no proof that it has ever occurred in my field or any other field. It is not routine, well understood or conventional anywhere on Earth.

    The examiner seems to intentionally leave out of his argument the basis why the inventive concept is abstract, only assumes as much, and then advances all his abstract type arguments.

    Nor is there any explanation of how inferior data using a generic computer could solve a problem beyond the reach of working professionals and experts using superior data and a dedicated network since 1956, unless an inventive step was present. Self evident.

    Perhaps, whether a person should frame a technical solution to a business method would only pertain to abstract ideas long prevalent in commerce.

  • [Avatar for Anon]
    September 5, 2019 09:34 am

    The statement (in and of itself) of “Ever since the U.S. Supreme Court’s 2014 Alice decision, the U.S. courts and the U.S. Patent and Trademark Office (USPTO) have consistently held that you can’t patent a business method by itself.” is wrong.

    The Court AND the patent office have expressly refused to be so clear and direct, and IN FACT, Justice Stevens LOST his majority writing position in the Bilski case when HE tried to be that direct.

    With such a foundational error, I am going to have to pass on the rest of the article… (unless comments get to be nonsensical and merit rebuttals)

  • [Avatar for Fredrick Omukubi Otswong'o]
    Fredrick Omukubi Otswong’o
    September 4, 2019 04:37 pm

    Directing a patent examiner to technical field classification is a wonderful technique of patent drafting. Where can I find your detailed material Sir?

  • [Avatar for Chris]
    September 4, 2019 02:46 pm

    Hey Mark – nice article. For one not well-versed in the intricacies of patent-speak such as myself, it can sound somewhat contradictory. That is, my layman’s understanding of Alice is that an abstract idea does not become eligible for a patent simply by being implemented on a generic computer. Yet, you seem to indicate that a business method becomes patentable when you can show the technology behind it. I guess the nuance is on the “technological improvement” aspect? I’ll definitely refer to the cited cases.

    Thanks again for the article

  • [Avatar for Anon]
    September 4, 2019 10:06 am

    Currently traveling (so have not yet dived into the article), but wanted to note how very much the headline sounds in opposite of what the Supreme Court wants (with their shrill admonition against “scriveners.”

  • [Avatar for TFCFM]
    September 4, 2019 09:48 am

    I admire Mr. Nowotarski’s ability to provide such good advice without using the troublesome term “abstract idea.” Bravo.

    The crux of Mr. N’s advice:
    The current legal and political climate make it very difficult to directly patent the business method itself. Patenting the technical inventions that are necessary for the practical implementation of the business method, however, is much more promising…

    More crudely summarized: Actually *invent* something useful and patent that — don’t try to patent the idea that others might invent something useful.

  • [Avatar for MaxDrei]
    September 4, 2019 01:41 am

    Given that everywhere else in the world follows the PCT definition of the extent of eligibility, namely, “all fields of technology”, which the courts inside the USA are now aligning with, and given that US inventors (or their financial backers) will very likely covet protection for their inventions also beyond the USA, might it be worthwhile for those drafting patent applications inside the USA to give some attention to how they are drafted outside the USA? Might financial backers even require that such attention be given, in order to maximise the return on their investment?

    Mark, might you want to add a word about the imperative of getting the drafting right first time, the error of supposing that you can leave all the scrivening till after filing at the USPTO.

  • [Avatar for concerned]
    September 4, 2019 12:28 am

    I agree with Pro Se remarks. An inventor has to dance around the insanity because of a SCOTUS ruling. “Fundamental economic process.” Yes I received that non-sense also.

    Is crashing a plane due to pilot error a “fundamental economic process?” Accordingly, is a business method that prevents all airplane crashes just a “fundamental economic process” not worthy of a patent?

    Are professionals and experts who make mistakes amounting to billions of dollars per year during the course of their employment just a “fundamental economic process?” Therefore, is a business method that eliminates said mistakes and errors just a “fundamental economic process” not worthy of a patent?

    Exactly what benefit to society is this kind of SCOTUS “patenting” promoting?

    I guess I rather go down swinging than dignify the insanity with a approach that caters to it. See a longstanding problem, solve a longstanding problem is the patent world I chose to live in regardless if it used a computer.

  • [Avatar for Pro Say]
    Pro Say
    September 3, 2019 06:39 pm

    Excellent advice Mark.

    How sad, however, that in order to protect the gold that is their (often breakthrough) business methods; inventors should instead consider directing the attention of patent adjudicators to the copper and the tin of their inventions.