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Final Computer Related Examination Patent Guidelines

This document contains the final guidelines for the examination of Computer-Implemented Inventions. These guidelines were based on the proposed examination guidelines and the accompanying legal analysis, which can also be found in BitLaw. This large document is divided into four parts, with each part being taken directly from the materials provided at the U.S.P.T.O. ftp site. The footnotes are hypertext linked into the text of the guidelines in both directions. The sections of this document are:

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Examination Guidelines for Computer-Related Inventions

Table of Contents

I. Introduction

II. Determine What Applicant Has Invented and Is Seeking to Patent

A. Identify and Understand Any Practical Application Asserted for the Invention
B. Review the Detailed Disclosure and Specific Embodiments of the Invention to Determine What the Applicant Has Invented
C. Review the Claims

III. Conduct a Thorough Search of the Prior Art

IV. Determine Whether the Claimed Invention Complies with 35 U.S.C. § 101

A. Consider the Breadth of 35 U.S.C. § 101 Under Controlling Law
B. Classify the Claimed Invention as to Its Proper Statutory Category

1. Non-Statutory Subject Matter

(a) Functional Descriptive Material:"Data Structures" Representing Descriptive Material Per Se or Computer Programs Representing Computer Listings Per Se
(b) Non-Functional Descriptive Material
(c) Natural Phenomena Such as Electricity and Magnetism

2. Statutory Subject Matter

(a) Statutory Product Claims

(i) Claims that Encompass Any Machine or Manufacture Embodiment of a Process
(ii) Product Claims--Claims Directed to Specific Machines and Manufactures
(iii) Hypothetical Machine Claims Which Illustrate Claims of the Types Described in Sections IV.B.2(a)(i) and (ii)

(b) Statutory Process Claims

(i) Safe Harbors
(ii) Computer-Related Processes Limited to a Practical Application in the Technological Arts

(c) Non-Statutory Process Claims
(d) Certain Claim Language Related to Mathematical Operation Steps of a Process

(i) Intended Use or Field of Use Statements
(ii) Necessary Antecedent Step to Performance of a Mathematical Operation or Independent Limitation on a Claimed Process
(iii) Post-Mathematical Operation Step Using Solution or Merely Conveying Result of Operation

(e) Manipulation of Abstract Ideas Without a Claimed Practical Application

V. Evaluate Application for Compliance with 35 U.S.C. § 112

A. Determine Whether the Claimed Invention Complies with 35 U.S.C. § 112, Second Paragraph Requirements

1. Claims Setting Forth the Subject Matter Applicant Regards as Invention
2. Claims Particularly Pointing Out and Distinctly Claiming the Invention

B. Determine Whether the Claimed Invention Complies with 35 U.S.C. § 112, First Paragraph Requirements

1. Adequate Written Description
2. Enabling Disclosure

VI. Determine Whether the Claimed Invention Complies with 35 U.S.C. §§ 102 and 103

VII. Clearly Communicate Findings, Conclusions and Their Bases

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Examination Guidelines for Computer-Related Inventions

I. Introduction

These Examination Guidelines for Computer-Related Inventions1 ("Guidelines") are to assist Office personnel in the examination of applications drawn to computer-related inventions.2 The Guidelines are based on the Office's current understanding of the law and are believed to be fully consistent with binding precedent of the Supreme Court, the Federal Circuit and the Federal Circuit's predecessor courts.

These Guidelines do not constitute substantive rulemaking and hence do not have the force and effect of law. These Guidelines have been designed to assist Office personnel in analyzing claimed subject matter for compliance with substantive law. Rejections will be based upon the substantive law and it is these rejections which are appealable. Consequently, any failure by Office personnel to follow the Guidelines is neither appealable nor petitionable.

The Guidelines alter the procedures Office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in either hardware or software. The Guidelines also clarify the Office's position on certain patentability standards related to this field of technology. Office personnel are to rely on these Guidelines in the event of any inconsistent treatment of issues between these Guidelines and any earlier provided guidance from the Office.

The Freeman-Walter-Abele3 test may additionally be relied upon in analyzing claims directed solely to a process for solving a mathematical algorithm.

Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead, such claims should be treated like any other process claims, pursuant to these Guidelines when relevant.4

The appendix includes a flow chart of the process Office personnel will follow in conducting examinations for computer-related inventions.

II. Determine What Applicant Has Invented and Is Seeking to Patent

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, Office personnel should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, Office personnel should indicate how rejections may be overcome and how problems may be resolved. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

Prior to focusing on specific statutory requirements, Office personnel must begin examination by determining what, precisely, the applicant has invented and is seeking to patent,5 and how the claims relate to and define that invention. Consequently, Office personnel will no longer begin examination by determining if a claim recites a "mathematical algorithm." Rather, they will review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims and any specific utilities that have been asserted for the invention.

A. Identify and Understand Any Practical Application Asserted for the Invention