Patentability of Business Method and Software of US Patents

• Main Authors: Guan-Jou Chen, 陳冠州
• Other Authors: Shang-Jyh Liu
• Format: Others
• Language: zh-TW
• Published: 2013
• Online Access: http://ndltd.ncl.edu.tw/handle/47356719599162676476

碩士 === 中原大學 === 財經法律研究所 === 101 === Business methods and computer software applications may fall within the “process” statutory class under section 101 of Title 35 of the United States Code. Nonetheless, U.S. case law has also held that abstract ideas, laws of nature, and physical phenomena have been found to be outside of the four statutory categories of patentable invention. Business methods and software programs may be considered as artificially created procedures or an implementation or representation of a thought process or mental activities and may thus be considered different from, for example, machines, manufactures, or compositions of matter that are concrete and tangible. Consequently, business methods and software programs that seek patent protection for their abstract ideas may be deemed as patent ineligible for their failure to meet the requirements under section 101 of Title 35 of the United States Code in the United States. Since State Street Bank v. Signature Financial Group (Fed. Cir. 1988), U.S. case law has not actually delineated what actually constitutes an abstract idea or mental activity that has been found patent ineligible under section 101 of Title 35 of the United States Code. The U.S. Court of Appeals for the Federal Circuit in its Bilski decision established the machine-or-transformation test to determine patent eligibility under 35 U.S.C. § 101. Upon further appeal, the United States Supreme Court holds that the machine-or-transformation test may be a useful and important clue but is not the sole test for deciding whether an invention is a patent-eligible process under 35 U.S.C. § 101. The U.S. Supreme Court Bilski decision renders U.S. patent practitioners to continue to seek the boundaries of patent eligibility. In order to better understand the uncertain boundaries of patent eligibility under the U.S. patent law jurisprudence, this research examines the Bilski decision and various guidelines published by the United States Patent and Trademark Office in response to the Bilski decision, analyzes various limitations under the current set of laws, and explore possible future development of patent eligibility under the U.S. patent jurisprudence.