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Death and Taxes and Patent-Ineligibility of Business Methods

For all the kvetching about the frustrating subjectivity and unpredictability of applying the Mayo/Alice patent-eligibility test, here is a case showing that there is a zone of certainty in determining patentability under 35 U.S.C. § 101. In In re Greenstein, 2019-1521 (Fed. Cir. Sept. 6, 2019) (per curiam; panel was Prost, Newman, and Moore) (non-precedential), the Federal Circuit issued a reminder that clients can be counseled with some certainty that business methods, however new and different, are not patent-eligible if the improvement is to a business process, and not to technology. Mark Greenstein, proceeding pro se, appealed the USPTO examiner’s rejection under §§ 101, 102, and 103 (the § 102 and § 103 rejections were not reached in the present decision), affirmed by the Patent Trial and Appeal Board (PTAB), of the following claim: One or more computers with associated software programmed to: receive, at a processor and store using…

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