USPTO cracking down on Business Method Patents

No Business Method Patents, means no Business Method Patents.


In a recent case, regarding Austin’s own Open Text, Judge Donato invalidated claims within a patent assigned to Open Text. The patent suit in question resulted from companies that create management software, wherein the claims were directed towards creating groups of users based upon the users’ interactions with websites, and forwarding emails to the users based on the actions.

The district court cited Alice Corp, to invalidate the patent under 35 USC 101, as reciting a very simple computer driven method, which is related with a basic marketing principle. Specifically, the court stated that the claims pretty much help identify a potential customer, and engage with them to improve their customer experience.  

The district court reasoned that for an invention to be patentable, the invention must do more than perform a “well-understood, routine, conventional activity” or just “computerizing the abstract idea.” The court further stated that tying the process to a computer does not add substance to basic marketing schemes.

This case is somewhat interesting for a couple of different reasons. First, in the past tying abstract ideas to concrete machines, even basic machines, such as “a computer” or “memory device” were used as somewhat workarounds the “abstract idea” limitations. However, with this case, (as well as in Alice Corp.) it appears that courts are invalidating patents to performing old ideas (or things that could have previously been implemented) on computers. Second, it appears that the invalided patents have an incredibly broad scope because a group of users could inherently only include a single user, and a “specified event” (or interaction with a website) could really be anything. This could have partially led to the invalidation of the claims. Third, if you are writing “business method patents”, the claims in the patent should be written fairly specific, with specific steps and/or actions that need to be done. This could potentially alleviate some issues of an “abstract idea.”


By | 2014-09-25T16:08:29+00:00 September 25th, 2014|Blog, Patent Attorney Takeaways|Comments Off on USPTO cracking down on Business Method Patents