Yesterday the USPTO published a guidance memo regarding patentability of computer-readable media (i.e., software patents). The USPTO has rejected many claims directed to computer-readable media if the claim could be broadly interpreted to cover a transitory propagating signal, rather than only tangible media such as hard drives or computer-readable disks. The USPTO’s rejections state that such claims cover non-statutory subject matter under 35 U.S.C. § 101.
This week the USPTO issued a new guidance memo containing specific language that the USPTO considers sufficient to overcome subject matter eligibility rejections involving computer-readable media. Specifically, the USPTO advises applicants who receive 101 rejections to amend the claims to state that the computer-readable medium is a “non-transitory” medium.
According to the guidance memo, the USPTO does not believe that this amendment will add new matter to a claim, even if the specification did not originally use those words, so long as the specification disclosed something other than a signal per se as the computer-readable medium.
(Thanks to my colleague Dan Scolnick for the heads up about this guidance memo.)
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Are we all just a bunch of scared sheep? The recent rejections of “computer readable medium” claims are in direct contradiction with case law. A computer readable medium is just a way to claim a computer program. It’s no different than an “apparatus” claim or a “method” claim. It’s simply an additional type of claim the courts have sanctioned. Doesn’t the patent office have anything better to do? I guarantee the courts will eventually slap the USPTO upside the head. It’s just a matter of time.