Patent Office Offers Suggested Claim Language To Cover Computer Readable Media
In a recent Notice (January 26, 2010), the Director of the U.S. Patent and Trademark Office, David Kappos, addressed the eligibility of computer readable media for patent protection.
Claims directed to "computer readable media" (such as a computer hard drive, compact disk, flash drive, or transitory propagating signals) are likely to be rejected under 35 U.S.C. §101 for defining non-statutory subject matter. The computer readable media may be construed to cover signals, per se, which are considered not patentable. Except in relatively unusual cases where signals are the only possible embodiment, this would likely be unintended by the patent practitioner.
In view of this broad interpretation of "computer readable media," Mr. Kappos suggests adding the limitation "non-transitory" to the claim. By adding the term non-transitory, the claim will no longer cover signals, per se. Mr. Kappos further added that amending claims to add this limitation would "typically not raise the issue of new matter" unless the specification expressly excludes a "non-transitory embodiment," which would occur when the signal is the "only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure."
In most cases, adding the non-transitory limitation will not be impermissibly narrowing. In cases where signals are the only viable embodiment, claims should be drafted in other ways to satisfy the machine or transformation test under In re Bilski.
During examination of a patent application, the Patent Office is required to give patent claims the "broadest reasonable interpretation." Without the non-transitory limitation, Mr. Kappos suggested that the Office will interpret the term "computer readable media" to include signals, particularly when the specification does not offer a more narrow definition or is otherwise silent.
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