Business Method and Software Patents: A

In its 2010 decision inBilski v. Kappos, the U.S. Supreme Court redefined patentable subject matter for business methods and computer software, but did so without imposing definitive tests and definitions, effectively leaving such guidance for future court decisions and the United States Patent and Trademark Office (USPTO). As a result, the law is essentially being written at present, and will continue to be written and narrowed over the next decade. Business Method and Software Patentsaddresses the drafting of business-method and software patents in the wake ofBilski v. Kappos. Morgan Rosenberg and Richard Apley offer a review and analysis of all relevant case law and guidelines presented by the United States Patent and Trademark Office (USPTO). With the use of actual patents filed by the authors, this work provides practical information and guidance on the drafting of successful patent applications.

Morgan D. Rosenberg is presently the Director of Middle East Operations at Litman Law Offices in Manassas, VA. He has specialized in patent application drafting for the past 15 years and is a regular contributor to Intellectual Property Today. Morgan D. Rosenberg is also the author of The Essentials of Patent Claim Drafting (Oxford University Press, November 2011) and Patent Application Drafting: A Practical Guide (Oxford University Press, June 2012). Richard J. Apley is the Chief Patent Officer at Litman Law Offices, where has supervises the firms patent attorneys, agents, and technical writers. Previously, he worked for the U.S. Patent and Trademark Office (USPT), where he was a Supervisory Patent Examiner and a Director of the Office of Independent Inventor Programs.

Foreword	p. xiii
Introduction	p. xvii
Business Methods: An Overview	p. 1
The Supreme Court Trilogy	p. 4
Bilski v. Kappos	p. 6
Background of Bilski	p. 7
The CAFC Decision	p. 9
Conclusion	p. 10
Patent Office Guidelines and the Post-Bilski Judicial Aftermath	p. 13
Post-Bilski Case Law	p. 13
USPTO Guidelines	p. 15
Latest Application of Bilski	p. 18
Examples of Business Method Claims	p. 21
Example 1: Patent No. 7,644,007	p. 21
Example 2: Patent No. 7,253,627	p. 24
Example 3: Published Patent Application No. 2010/0312654	p. 29
Analysis of the Three Examples	p. 35
Example 1: Patent No. 7,644,007	p. 36
Example 2: Patent No. 7,253,627	p. 41
Example 3: Published Patent Application No. 2010/0312654	p. 48
Algorithms and Pure Software Applications	p. 55
Example 4: Published Patent Application No. 2010/0322422	p. 55
Drafting the Specification	p. 63
The Detailed Description and the Drawings	p. 63
The Background	p. 66
The Summary	p. 66
Other Methods	p. 67
Surgical Methods	p. 67
Treatment Methods	p. 73
Games	p. 78
Teaching Methods	p. 90
Miscellaneous Methods	p. 94
Appendices
The First (Surviving) Business Method Patent	p. 97
USPTO Guidelines for Business Methods (July 27, 2010)	p. 101
Bilski v. Kappos, 130 S.Ct. 3218 (2010)	p. 113
U.S. Patent No. 7,644,007	p. 187
U.S. Patent No. 7,253,627	p. 205
U.S. Published Patent Application No. 2010/0312654	p. 219
U.S. Published Patent Application No. 2010/0322422	p. 229
USPTO Interim Examination Instructions (August 24, 2009)	p. 249
USPTO Interim Business Method Training Material (August 2009)	p. 263
Surgical Methods	p. 275
U.S. Patent No. 7,127,295	p. 277
U.S. Patent No. 7,399,826	p. 286
U.S. Published Patent Application No. 2011/0045438	p. 290
Treatment Methods	p. 309
U.S. Patent No. 7,288,077	p. 311
U.S. Patent No. 7,594,511	p. 326
U.S. Patent No. 7,895,057	p. 331
Games	p. 339
U.S. Patent No. 6,419,230	p. 341
U.S. Patent No. 7,431,298	p. 361
U.S. Patent No. 7,665,733	p. 372
Teaching Methods	p. 387
U.S. Patent No. 6,863,533	p. 389
U.S. Published Patent Application No. 2011/0044135	p. 401
Miscellaneous Methods	p. 423
U.S. Patent No. 7,908,181	p. 425
U.S. Patent No. 7,939,466	p. 442
Basic Patent Application Drafting Tips	p. 449
Title	p. 449
Priority Claims	p. 450
Field of the Invention	p. 451
Description of the Related Art	p. 451
Summary of the Invention	p. 453
Brief Description of the Drawings	p. 454
Drawings	p. 454
Detailed Description of the Preferred Embodiments	p. 455
Abstract	p. 456
Claims	p. 457
Claim Structure	p. 457
Introduction	p. 457
Example	p. 458
The Class and Preamble	p. 461
Transitional Phrases	p. 464
The Claim Body	p. 465
The Purpose Clause	p. 466
Essential Form	p. 467
Claim Fundamentals	p. 467
Single Statutory Classification	p. 467
Completeness	p. 469
Definiteness	p. 470
Dependent Claims	p. 473
Checklists	p. 479
Business Methods Partnership Meeting (July 21,2011)	p. 481
35 USC 101-Practical Tips	p. 483
Update on Business Method Patents	p. 497
Index	p. 515
Table of Contents provided by Ingram. All Rights Reserved.

What is included with this book?

The New copy of this book will include any supplemental materials advertised. Please check the title of the book to determine if it should include any access cards, study guides, lab manuals, CDs, etc.

The Used, Rental and eBook copies of this book are not guaranteed to include any supplemental materials. Typically, only the book itself is included. This is true even if the title states it includes any access cards, study guides, lab manuals, CDs, etc.

FREE SHIPPING

Amazon no longer offers textbook rentals. We do!

Business Method and Software Patents: A Practical Guide

Summary

Author Biography

Table of Contents

Supplemental Materials