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PTO Issues Proposed Guidelines for Examination of Computer Implemented Inventions

In response to recent decisions from the Court of Appeals for the Federal Circuit, the PTO has now issued Proposed Guidelines for examination of computer-implemented inventions. In its Proposed Guidelines, the PTO has explicitly stated that any software in combination with a computer readable medium, memory, or computer is a statutory (patentable subject matter) machine or article of manufacture and any steps performed in a computer is a statutory process. The Proposed Guidelines are particularly significant in that they now enable inventors to patent computer-implemented inventions which had previously been considered unpatentable by the PTO.

Classification of Inventions Under the New Guidelines

In its Proposed Guidelines, the PTO has defined a number of rules it will use in determining whether a particular invention involves statutory subject matter. Any computer or other programmable apparatus whose actions are directed by a computer program or other form of software will be considered a statutory "machine". Any computer-readable memory (such as a floppy disk) that can be used to direct a computer to function in a particular manner when used by the computer will be considered a statutory "article of manufacture". A series of specific operational steps to be performed on or with the aid of a computer will be considered a statutory "process". If a claim falls within any of these three rules, the PTO now considers the claim to recite patentable (or statutory) subject matter. These rules by the PTO simplify the examination process since Examiners no longer have to judge whether the invention interacts with the physical world sufficiently enough to constitute statutory subject matter. The Proposed Guidelines, in essence, attempt to set forth a bright-line test for deciding if a computer-implemented invention is patentable.

Subject Matter NOT Patentable

Even though the Proposed Guidelines allow patent protection for a broader range of computer-implemented inventions than in the past, claims defining inventions which are indistinguishable from abstract ideas, laws of nature, and natural phenomena are still unpatentable. Non-statutory (and hence unpatentable) subject matter includes claims that recite a compilation or arrangement of data independent of any physical element, a data structure independent of any physical component of a computer, or a process that does nothing more than manipulate abstract ideas or concepts (i.e., a process consisting only of steps used to solve a mathematical algorithm).

Additionally, a claim directed to a known computer-readable memory that is encoded with data representing creative or artistic expression (such as music or literature) is unpatentable because the subject matter is more suitable for copyright protection rather than patent protection.

In re Lowry

The Proposed Guidelines were written to be consistent with In re Lowry, 32 F.3d 1579, 32 U.S.P.Q.2d 1031 (Fed. Cir. 1994), in which the Federal Circuit held that a data structure in a computer memory was statutory (patentable) subject matter. A portion of a representative claim from Lowry is as follows:

  1. A memory for storing data for access by an application program being executed on a data processing system, comprising:

    a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:

    a plurality of attribute data objects stored in said memory, each of said attribute data objects containing different information from said database;

    a single holder attribute data object for each of said attribute data objections, each of said holder attribute data objects being. . . ; . . .

    an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

The Court characterized this claim as imposing a physical organization on the data since the data structures were specific electrical or magnetic structural elements in a memory.

By claiming "a memory for storing data" and specifying that the data structure was "for access by an application program being executed on a data processing system" in the preamble, Lowry recited a computer-readable memory that could direct a computer to function in a particular manner. Note that if Lowry did not particularly claim a computer-readable memory or specify how the memory functioned with the computer, the claim probably would have recited non-statutory subject matter since it would have merely listed the relationship between attribute data objects without reciting any functional relationship with a computer.

In re Beauregard

Shortly before the PTO issued its Proposed Guidelines, it filed a Motion to Dismiss an appeal to the Federal Circuit in In re Beauregard, Appeal No. 95-1054 (Fed. Cir., filed November 15, 1994) stating that it was in agreement with the applicant that its claims recited statutory (patentable) subject matter. The Federal Circuit granted the motion, not because it agreed that the claims were patentable, but because the agreement between the parties on the patentability issue eliminated any case or controversy for the court to resolve.

The claims in In re Beauregard related to software and a computer-readable medium. The particular structure of the claims fell into two categories, both of which were considered patentable by the PTO:

  1. An article of manufacture (or "A computer program product") comprising:

    a computer useable medium having a computer readable code means embodied in said medium for [overall function of software], the computer readable program code in said article of manufacture comprising:

    computer readable program code means for causing the computer to [perform a first function of the software];

    [repeat for each function of software to be claimed].

  2. A program storage device readable by a machine, tangibly embodying a program of instructions executable by the machine to perform method steps for [overall function of software], said method steps comprising:

    [conventional method claim elements describing software].

Thus, if claims to computer-implemented inventions set forth specific structure as in Lowry or have claim language similar to that used in Beauregard, the PTO will probably view the claims as covering statutory subject matter.

A Word of Warning

The PTO's Proposed Guidelines merely represent the PTO's opinion on patentability; they are not binding on the courts. It is very possible that the PTO is incorrect in its decision on what constitutes statutory subject matter, and the Federal Circuit has the power to decide that what is considered patentable by the PTO under the Proposed Guidelines is not statutory subject matter. This means that although the PTO may issue patents to computer-implemented inventions, the Federal Circuit may later decide that the patents are invalid.

Only time and hundreds of thousands of dollars in legal fees will decide whether the Federal Circuit agrees with the PTO on the patentability of computer-implemented inventions. Nevertheless, the Proposed Guidelines provide a window of opportunity for obtaining patent protection far beyond what was previously possible.


Inventors wishing to claim computer-implemented inventions now have the magic words to do so due to the PTO's Proposed Guidelines, In re Lowry, and In re Beauregard. By carefully crafting an appropriate preamble reciting some structural element, such as a memory, and defining how the element directs a computer's function, or by consistently referring to a computer-readable means in the body of a claim to give physical structure to a software invention, applicants can now obtain patents for computer-implemented inventions which were previously considered unpatentable.

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