Refining its previous guidance regarding patent eligible subject matter, the U.S. Patent and Trademark Office (USPTO) issued a formal suggestion to applicants pursuing applications directed to computer readable media. The notice is available online at http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf.

In August 2009, the USPTO issued revised guidelines for examination of patent claims under Section 101 (see IP Update, Volume 12, No. 9). The revised guidelines continued to recognize Beauregard claims, for media bearing computer instructions, as a patent-eligible article of manufacture. However, in view of the Nuijten decision (see IP Update, Vol. 10, No. 10), which held that per se “signals” are ineligible for patenting under § 101, the USPTO indicated the phrase computer readable medium alone is too broad for § 101 eligibility. Instead, the guidelines indicated such claims must be directed to a non-transitory, tangible computer readable storage medium. The recent notice reiterates these points, explaining that the phrase computer readable medium, when broadly construed, covers both non-transitory tangible media and transitory propagating signals per se.

The notice specifically suggests that applicants add the limitation “non-transitory” to computer readable media claims in order to narrow such claims to exclude transitory embodiments that may be deemed ineligible in view of the Nuijten decision. The notice indicates that this amendment should be acceptable in the majority of applications. However, the notice cautions that in some applications, where the only disclosed embodiment is a signal per se, the specification may not support such an amendment.