Business Method Patents

Back in January, I posted a book review for the Essentials of Claim Drafting by Morgan D. Rosenberg. See here.

Morgan D. Rosenberg and Richard Apley have now published a companion volume: Business Method and Software Patents, A Practical Guide.

The 512 book looks impressive from the outside, in its smart two-tone grey binding with the publisher, Oxford, written in classic serif capitals on the spine. from the outside, therefore, the work looks impressive and is a valuable boon for display shelves viewable by clients.

From the inside, the book is a little more disappointing. In fact, it is a damp squib reminiscent of the long-awaited re Bilski Supreme Court decision regarding business method patents.

The authors have written a short essay on re Bilski, the prior art to that decision and the current state of the machine-or-transformation test as effectively the benchmark despite the door remaining open for other tests. The essay is competent, if a little pedestrian.

There is a short chapter on software patents and algorithms, that demonstrates Beauregard claim drafting, but adds little to their previous guide.

Oddly, the book includes therapeutic methods and methods of playing games as examples of business methods. The only obvious link is that most other jurisdictions consider these not patentable subject matter, however the book only relates to US patents. In principle, there is nothing wrong with a book relating to one jurisdiction, and the US is still the most important for most clients. Nevertheless, since the US allows patents for subject matter considered non-patentable elsewhere, a warning to readers that some of the author’s issued patents wouldn’t have a hope elsewhere would have been a welcome addition.

There is a fascinating example of an issued patent for a therapeutic treatment. US 7,288,077 “Device and Method to Alleviate Lower back Pain”, where the method comprises providing a device and the patient lifting his/her knees and rotating his/her buttocks.  One wonders how such claims could ever be enforced. Even weirder is US 7, 895,057 that is directed to a method fo providing postpartum treatment for enhancing comfort, physical and psychological wellbeing of a patient shortly after the birth of the child. This patent consists of plonking the patient in a wheelchair and carting her around to have her hair done, a message and skin care medicaments applied. It is surmised that the provision of the wheelchair ties the method to a machine. My theory, based on the patent issuing in February 2011, is that it was allowed in an attempt by an incompetent examiner increasing his examination rate before the end of the year. 

Most of the book, pages 103 to 515, are appendices, many of which being examples of US patents that are easily obtainable over the Internet and printable in A4 or viewable as text on the computer screen. Why would anyone want a half-size (approx A5) version? I am anyway, removing my glasses to read the tiny print of patents, so see little advantage in reducing the print size. The entire Bilski vs. Kapos Appeal is also reproduced in full. Like many practitioners I read the decision when it came out. it was sufficiently vacuous that I have no desire to have a copy on reference and shredded the decision long ago. If I should need it again, I reckon it will take me less time to find it on the Internet than to get up from the computer, find the book and open it.

The book is largely padding, and it is not a tome that I can recommend.

It would have been better if the first hundred pages were condensed and then added to the Essentials of Claim Drafting, with the duplication omitted.

Business Method and Software Patents, A Practical Guide, by Morgan D. Rosenberg and Richard Apley, Oxford University Press, February 2012. $185.

Available here. 

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