About the Book
In its 2010 decision in Bilski 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 Patents addresses the drafting of business-method and software patents in the wake of Bilski 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.
Table of Contents:
FOREWORD BY RICHARD J. APLEY; INTRODUCTION; CHAPTER ONE: BUSINESS METHODS: AN OVERVIEW; THE SUPREME COURT TRILOGY; BILSKI V. KAPPOS; BACKGROUND OF BILSKI; THE CAFC DECISION; CONCLUSION; CHAPTER TWO: PATENT OFFICE GUIDELINES AND THE POST-BILSKI JUDICIAL AFTERMATH; POST-BILSKI CASELAW; USPTO GUIDELINES; LATEST APPLICATION OF BILSKI; CHAPTER THREE: EXAMPLES OF BUSINESS METHOD CLAIMS; EXAMPLE 1: PATENT NO. 7,644,007; EXAMPLE 2: PATENT NO. 7,253,627; EXAMPLE 3: PUBLISHED PATENT APPLICATION NO. 2010/0312654; CHAPTER FOUR: ANALYSIS OF THE THREE EXAMPLES; EXAMPLE 1: PATENT NO. 7,644,007; EXAMPLE 2: PATENT NO. 7,253,627; EXAMPLE 3: PUBLISHED PATENT APPLICATION NO. 2010/0312654; CHAPTER FIVE: ALGORITHMS AND PURE SOFTWARE APPLICATIONS; EXAMPLE 4: PUBLISHED PATENT APPLICATION NO. 2010/0322422; CHAPTER SIX: DRAFTING THE SPECIFICATION; THE DETAILED DESCRIPTION AND THE DRAWINGS; THE BACKGROUND; THE SUMMARY; CHAPTER SEVEN: OTHER METHODS; SURGICAL METHODS; TREATMENT METHODS; GAMES; TEACHING METHODS; MISCELLANEOUS METHODS; APPENDIX A: THE FIRST (SURVIVING) BUSINESS METHOD PATENT; APPENDIX B: USPTO GUIDELINES FOR BUSINESS METHODS (JULY 27, 2010); APPENDIX C: BILSKI V. KAPPOS, 130 S.CT. 3218 (2010); APPENDIX D: U.S. PATENT NO. 7,644,007; APPENDIX E: U.S. PATENT NO. 7,253,627; APPENDIX F: U.S. PUBLISHED PATENT APPLICATION NO. 2010/0312654 PG. 270; APPENDIX G: U.S. PUBLISHED PATENT APPLICATION NO. 2010/0322422; APPENDIX H: USPTO INTERIM EXAMINATION INSTRUCTIONS (AUGUST 24, 2009) PG. 296; APPENDIX I: USPTO INTERIM BUSINESS METHOD TRAINING MATERIAL (AUGUST, 2009); APPENDIX J: SURGICAL METHODS; U.S. PATENT NO. 7,127,295; U.S. PATENT NO. 7,399,826; U.S. PUBLISHED PATENT APPLICATION NO. 2011/0045438; APPENDIX K: TREATMENT METHODS; U.S. PATENT NO. 7,288,077; U.S. PATENT NO. 7,594,511; U.S. PATENT NO. 7,895,057; APPENDIX L: GAMES; U.S. PATENT NO. 6,419,230; U.S. PATENT NO. 7,431,298; U.S. PATENT NO. 7,665,733; APPENDIX M: TEACHING METHODS; U.S. PATENT NO. 6,863,533; U.S. PUBLISHED PATENT APPLICATION NO. 2011/0044135; APPENDIX N: MISCELLANEOUS METHODS; U.S. PATENT NO. 7,908,181; U.S. PATENT NO. 7,939,466; APPENDIX O: BASIC PATENT APPLICATION DRAFTING TIPS; TITLE; PRIORITY CLAIMS; FIELD OF THE INVENTION; DESCRIPTION OF THE RELATED ART; SUMMARY OF THE INVENTION; BRIEF DESCRIPTION OF THE DRAWINGS; DRAWINGS; DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS; ABSTRACT; CLAIMS; CLAIM STRUCTURE; INTRODUCTION; EXAMPLE; THE CLASS AND PREAMBLE; TRANSITIONAL PHRASES; THE CLAIM BODY; THE PURPOSE CLAUSE; ESSENTIAL FORM; CLAIM FUNDAMENTALS; SINGLE STATUTORY CLASSIFICATION; COMPLETENESS; DEFINITENESS; DEPENDENT CLAIMS; APPENDIX P: CHECKLISTS; APPENDIX Q: BUSINESS METHODS PARTNERSHIP MEETING (JULY 21, 2011); A. 35 USC 101 - PRACTICAL TIPS; B. UPDATE ON BUSINESS METHOD PATENTS AND BEST PRACTICES TO STREAMLINE; EXAMINATION; TABLE OF CASES; INDEX
About the Author :
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. Mr. Rosenberg is also the author of The Essentials of Patent Claim Drafting (Oxford University Press, November 2011). Richard J. Apley is the Chief Patent Officer at Litman Law Offices, where he supervises the firm's patent attorneys, agents, and technical writers. Previously he worked for the U.S. Patent and Trademark Office (USPTO), where he was a Supervisory Patent Examiner and a Director of the Office of Independent Inventor Programs.
Review :
"Business Method and Software Patents is a must-read for any patent practitioner. Morgan Rosenberg and Richard Apley are two stalwarts in the field of difficult-to-obtain business method and software patents, and their book demonstrates why, in addition to being busy, talented practitioners, Rosenberg and Apley are also both teachers at heart. Apley practically wrote the early law during his tenure at the USPTO, and with Rosenberg in this volume describes the constantly changing landscape of this very complex subject matter. This book is an up-to-date, easy-to-digest, post-Bilski guidebook that should be on every patent practitioner's bookshelf."
--Robert J. Kimmer, Esq.
Senior Trademark and IP Attorney, Rader, Fishman & Grauer
"Over the years, there has been an ongoing question as to whether business methods and/or software rise to the level of patentable subject matter under 35 USC §101. Central to the debate is the question of whether business methods and software are 'abstract concepts, ' which have long been accepted as excluded from patent protection. In Business Method and Software Patents: A Practical Guide, Morgan Rosenberg and Richard Apley provide, not only the legal framework underlying patentability issues, but also clearly explain techniques and strategies for successfully writing and prosecuting business method and software patent applications. This text is a valuable resource for navigating these still murky waters and should be on the bookshelf of novice and experienced patent practitioners alike."
--David R. Wood, Founder and President, Wood & Associates, LLC
