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The Unintended Effects of a Patent Office Memorandum -- How the USPTO is Facilitating a Loophole to Software Patent Infringement

By Patrick T. Muffo and Steven D. Jinks 1

The U.S. Patent and Trademark Office recently instructed its Examiners to reject all “computer readable medium” claims unless they are directed to “non-transitory” mediums. Although seemingly harmless, such a limitation may provide an easy loophole for avoiding infringement of software patent claims.

I. Introduction

In the case of In re Nuijten, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) held that a signal per se is not patentable subject matter under 35 U.S.C. §101. 2 Since the Federal Circuit issued its en banc decision, the U.S. Patent and Trademark Office (USPTO) published several internal documents explaining how patent Examiners should implement the Federal Circuit’s holding.3 The most recent memorandum instructs USPTO patent Examiners to insist that all so-called “Beauregard claims” be limited to “non-transitory” computer-readable media.4 The memorandum not only conflicts with existing law, including Nuijten, but also requires patent Applicants to narrow the scope of their software claims beyond several forms of “computer readable media” that are commonly used to store computer programs. The memo...

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