Patentability of Business Methods, Software and Other Methods
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In Patentability of Business Methods, Software and Other Methods (2015 Edition), by Morgan D. Rosenberg and Richard J. Apley, the case law has all been updated to include the latest decisions up to October of 2014. It should be noted that substantial changes to the judicial interpretation (and subsequent guidelines for examination at the United States Patent and Trademark Office (USPTO)) of business methods, software and the like have resulted from the June 2014 U.S. Supreme Court case Alice Corp. v. CLS Bank International. This most recent decision applies a new standard to such methods, treating "abstract ideas" in the same way that "products of nature" are handled with regard to patentability (as laid out in the 2012 U.S. Supreme Court ruling in Mayo v. Prometheus).
• A practical “how to” guide on the drafting of business method applications, particularly claims in U.S. patent applications
• Covers in detail the mechanics of assembling both basic and complex business method and software applications
• Provides helpful illustrations taken from issued U.S. patents and examples of published U.S. patent applications
• Offers a wide variety of examples of different claim types and styles, as well as templates and checklists
"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
The eBook versions of this title feature links to Lexis Advance for further legal research options.
Table of Contents
CHAPTER 1 Alice Corp. v. CLS Bank International
CHAPTER 2 Mayo v. Prometheus and Bilski v. Kappos
CHAPTER 3 Summary of Post-Alice Corp. v. CLS Bank International Patentability Standards and Examples
CHAPTER 4 35 U.S.C. § 101 and Other Types of Methodsples
CHAPTER 5 Pre-Bilski History of Business Methods