Last week, the PTO published a number of additional rules packages to implement the America Invents Act.
- Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions;
- Practice Guide for Proposed Trial Rules;
- Transitional Program for Covered Business Method Patents – Definition of Technological Invention;
- Changes to Implement Transitional Program for Covered Business Method Patents;
- Changes to Implement Post-Grant Review Proceedings;
- Changes to Implement Inter Partes Review Proceedings; and
- Changes to Implement Derivation Proceedings.
Section 18 of the America Invents Act is a special transition program for challenging business method patents. The section defines “business method patents” as
a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
The bill directed the PTO to issue regulations as to what a “technological invention” is. The PTO has now proposed a definition:
whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.
This determination is to be made on a case-by-case basis. The PTO supports this definition by reference to the legislative history of the AIA. Unfortunately, this does not help very much. What is a “technical problem”? What is a “technical solution”?