CIPA in UK held earlier this year a seminar to celebrate the launch of the new edition of the CIPA Guide to the UK Patents Act, 1977, and I gave a paper on computer software inventions sitting next to Robin Jacob who was a barrister specialising in IP law and is now a judge in our Court of Appeal. The one important question that I put forward is whether the application in issue discloses an invention that is novel, inventive and described in sufficient detail to enable the invention to be performed. Under your 35 U.S.C 112(6) if the claim is functional there is a requirement to disclose sufficient supporting structure, and even if the claim is not purely functional it is good discipline to disclose such structure in any event. Many applications in the business method field would fail under such tests (including, I suggest State Street), and there are strong arguments that it is better to use these traditional and long-established tests first, and only use the “nuclear weapon” of patent-eligible subject matter when it is really necessary. If an application satisfies the traditional tests, then the role of the practitioner and the Patent Office is then surely to help a worthy inventor to gain the protection to which he is entitiled and to try to avoid a deserving application from being rejected on a mere technicality.

Thanks for you comment. I know you’re article and I agree with what you say. Now whether SCOTUS will pick up on this is a completely different matter. As you say, we can hope.

We also make the Morse/112 argument in our amicus brief as the “clue” to defining an abstract claim. I’m hopeful the court will pick up on it.
http://papers.ssrn.com/abstract=1485043