Business Method and Software Patents

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.

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