The United States continues to provide liberal eligibility for business and computer implemented processes, with no strict machine requirement. Europe, continues to enforce statutory exclusions, while accepting specifications that highlight a technical solution to a technical problem. China’s recent guideline updates require rejecting anything resembling a business method despite machine trappings. Within this bedeviling triangle, reports are emerging of the loss of entire applications due to subject matter difficulties. Many lacked a specification and claims properly equipped for subject matter squalls. Facing progressively stricter rules while moving eastward, abandonment regretfully becomes an option for some specifications drafted with western-centric subject matter rules exclusively in mind.
The recent Bilski1 decision from U.S. Supreme Court (SCOTUS) failed to categorically deny business methods and software. While rebuking a strict test and reviving liberal State Street2 -era eligibility interpretation, post-Bilski navigation is still uncertain. In Ex Parte Proudler3, in its first post-Bilksi opinion, the US’s Board of Patent Appeals and Interferences (BPAI) declared claims drawn to applying usage rules to data, to be “abstract” while relying heavily on the lack of a machine.
In its own encounter4, the EPO Enlarged Board of Appeal procedurally sidestepped whether a program recited on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) European Patent Convention (EPC) leaving subject matter eligibility questions unanswered. Instead, the Board re-affirmed existing statutory exclusions5 and case law, where a computer implemented method6 or a computer program, which can bring about a technical effect that goes beyond normal physical interactions between the software and the hardware7 is not excluded. Falling within the excluded categories can be avoided or overcome by the inclusion of a technical means that lends itself to a technical effect or solution to an objective technical problem not tied to the business method itself.
Those venturing farther, be warned - China’s State Intellectual Property Office (SIPO) is cracking down by vigorously applying PRC Patent Law8 during examination. Under the 2010 revisions of its own Guidelines9 and Implementing Regulations10, Examiners must first consider whether a new technical solution11 exists for inventions; and business method inventions have been strongly disfavored as lacking technicality. Examiners consider whether technical means are employed to solve a technical problem, not a commercial problem, to obtain technical effects in conformity with natural law. With a deluge of Article 2, Paragraph 2 rejections, China agents are sounding a discouraging practical tone, even where conventional hardware is disclosed, insisting that formalistic amendments will not be enough since the three “technicalities” requirements – technical means, solving technical problems, with a technical effect, must be satisfied simultaneously.
Clients seeking global coverage should carefully consider the changing tide of subject matter requirements from west to east before launching a global prosecution effort with U.S. centric specifications. While amendments can often cure subject matter issues in the U.S. and Europe, applications running afoul in the East have little chance for redemption, unless the technicalities requirements have already been met.