What Is Non-Transitory?

Non-transitory refers to computer-readable media (CRM) that stores data for short periods or in the presence of power such as a memory device or Random Access Memory (RAM).

The term "non-transitory" first appeared in United States Patent and Trademark Office (USPTO) training material on August 25, 2009. It stated that transitory signals as subject matter are not patent-eligible.

Patent-Eligible Subject Matter

In the United States, the patentability of inventions is granted to: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

For an invention to be patentable, it has to be useful. Moreover, it has to be within at least one of the four categories of patentable subject matter:

  1. Process
  2. Machine
  3. Manufacture
  4. Composition of Matter

Judicial Exceptions

Over the years, the courts have changed the definition of patent-eligible subject matter. This is so they can consider more recent technical advancements. These changes are known as judicially recognized exceptions. The Patent Office and its examining corps uses them to decide whether an invention is eligible for a patent.

Some common judicially recognized exceptions are:

  • abstract ideas
  • laws of nature
  • natural phenomenon
  • mental processes
  • mathematical algorithms
  • scientific principles

Computer-Readable Media (CRM)

A computer-readable media claim is also called a Beauregard claim. The name comes from a 1995 case that established it as a way of organizing a claim. A CRM claim is infringed by a medium with instructions called bits. They come from a machine that will carry out the steps of what would be a patentable method claim.

The rules state the bits have to reside somewhere tangible, such as a compact disc. They cannot simply be flying through the air or down a wire. It means that software programs, when stored on a tangible medium, can be patented

This worked well until the case of In re Nuijten. That is when the Federal Circuit stated that transitory propagating signals were not patent-eligible. Their nature kept them from falling within the statutory categories of patent-eligibility. This undermined Beauregard claims.

These transitory signals are not patentable under the Federal Circuit's In re Nuijten decision. They do not fall into any of the four statutory categories of process, machine, manufacture, or composition.

On January 26, 2010, David Kappos, director of the U.S. Patent and Trademark Office, advised that patent applicants wanting to avoid running into the trouble of In re Nuijten should direct all software claims to non-transitory computer-readable media. But this is not a requirement. As of 2015, about 4 percent of patents recently granted included non-transitory claim limitations.

Ex Parte Mewherter

The USPTO has designated Ex parte Mewherter as a precedential decision for the treatment of rejections under 35 U.S.C. § 101.

The case involved a patent application from IBM directed to a "system for converting slide show presentations." The system converts each slide into "raster imagery." It then extracts contextual data, such as titles, and places them in the proximity of the raster imagery.

The claim in question in this case, was claim 16, which states:

"A machine-readable storage medium having stored thereon a computer program for converting a slide show presentation for use with a non-presentation application, the computer program comprising a routine of set instructions for causing the machine to perform the steps of:

  • Extracting a slide title for a first slide in a slide show presentation produced by a slide show presentation application executing in memory of a computer;
  • Converting said first slide with said slide title into a raster image;
  • Disposing both said slide title and said raster image of said slide in a markup language document; and
  • Repeating said extracting, converting and disposing steps for a selected group of other slides in the slide show presentation."

The patent examiner rejected the claim stating that it was a non-statutory subject matter. He indicated the instructions could be imbedded in a signal or wave, which would make them unpatentable under In re Nuijten.

IBM appealed to the PTAB, arguing its claim of "machine readable storage medium" was sufficiently fixed so it would avoid any transitory concerns. The PTAB upheld the examiner's rejection and said that under the "broadest reasonable interpretation," a "machine readable storage medium" encompasses unpatentable transitory signals.

Technical Flaws

There is still some confusion over what a non-transitory computer-readable medium really is. Non-transitory computer-readable media can cover everything from external hard drives to CDs and DVDs, as long as it stores data.

The confusion comes when we talk about computer-readable media that only stores data for a short period, such as volatile memory that stores data only when the power is on. Another example is flash drives. Information or files in a flash drive can be overwritten. That means they can be considered transitory. This has created a loophole for pirated software, which could be temporarily stored in volatile memory but permanently stored outside of the U.S.

This narrow claim language could make avoiding infringement very simple.

Non-Transitory Computer-Readable Media Rejections

Rejections for non-transitory computer-readable media may occur if the inventor does not specify the exact medium when making a non-transitory claim.

For example, claim AB states a "computer readable medium." It does not specify or disclose that the computer-readable media is non-transitory. The Examiner says the claimed "computer readable medium" can be a transitory signal, which is non-statutory. The Examiner then suggests the applicant replaces "computer readable medium" with "non transitory computer readable medium." In addition, the applicant can clarify that the "computer readable medium" is non-transitory on the specification or on the record.

The applicant then has three options:

1. Amend the claims so they state a "non-transitory computer-readable medium."

2. Amend the specification to state the computer-readable media described within the application is non-transitory or to state that signals are excluded.

3. Argue without making any amendments that the computer-readable media is non-transitory.

In the past, software claims have been rejected when the preambles of the claims did not recite non-transitory computer-readable media.

In the case of Ex parte Jung, the appallants filed an appeal with the Patent Trial and Appeal Board (PTAB) after the Examiner rejected one of their claims, claim 95. The Examiner found that while the claim stated it was non-transitory, it did not state the media was a computer-readable media. This was interpreted as nonfunctional descriptive material, which could include paper. On September 28, 2015, the PTAB agreed with the Examiner's decision and upheld the rejection.

Transitory Patentable Subjects

Rather than disqualifying all transitory inventions, it may be a better approach is to focus on whether the invention is physical, transferable, and reproducible.

Physical

In the past, courts have allowed signals that have shown physical qualities. In the Supreme Court case of Dolbear v. American Bell Tel. Co., the Court held that electricity could be patentable. The Court stated that Bell's art consisted in controlling the force as to make it carry out its purpose, which involved real, physical efforts.

The U.S. Patent and Trademark Office has previously had a wide view of allowing computer-readable media other than non-transitory computer disks. After releasing the Computer-Related Invention Guidelines, the U.S. Patent and Trademark Office also released Claim Examples. This allowed them to train examiners on how to apply the guidelines properly.

The Federal Circuit has held that signals with physical effects can be considered physical themselves. Continuing to view physical signals as patent-eligible would not disrupt patent law.

Transferable

Being able to transfer the physical embodiment of an invention should also show why the invention is patent-eligible as an article of manufacture. If a software claim represents a physical and transferable embodiment, then it should be patent-eligible as an article of manufacture.

When software is embodied on a physical medium, the intangible and non-rivalrous idea takes on a physical and rivalrous expression. Just as the transfer of transitory media such as CDs, hard drives, and USB drives involves physical forms of transfers, so does a signal involve a physical transfer.

When software is embodied in a physical medium, it meets the standard of a patent-eligible article of manufacture. This is because it can be transferred to another person.

Reproducible

Just because something is physical and transferable doesn't mean it automatically meets the standards of patent-eligibility. The invention also needs to be reproducible to prove it is constant and predictable. Signals used to transfer software should be patent-eligible.

By taking a stand that if a CRM is physical, transferable, reproducible, and not simply non-transitory, a clearer line for patentability of signal claims can be drawn. It also encourages growth in the continuously growing area of software development.

Proposed Signal Claims

The Federal Circuit in Nuijten could have categorized the signal as a manufacture, using an expansive view of subject matter. A manufacture includes "every article devised by man except machinery upon the one side, and compositions of matter and designs upon the other."

Assuming the Federal Circuit made the right decision in the Nuijten case, a signal claim should be accepted when it has all the following limitations:

  • physical
  • transferrable
  • reproducible.

It may be that the court struck down the signal claim in Nuijten because it did not have any modifiers or limitations. The USPTO has issued over 450 patents with claims that have the phrase "computer data signal embodied in a carrier wave."

The "computer data signal" claim demonstrates that the signal is physical. In the Nuijten case, a signal claim without any modifiers was physical. It must be assumed a "computer data signal" is also physical.

The signal can then be transferred to computers, since the claim is a computer data signal. This means it is transferable.

The computer data signal is also reproducible. Computer data is transmitted in blocks, followed by a check of the integrity of the receiver's data. If there is a single bit error, the entire block has to retransmit. This ensures the content embedded in the signal is reproducible down to the very bit. Modifying the signal claim with "computer data" should be enough to prove the signal is reproducible.

Another signal claim that should pass inquiry into the subject matter is "computer-readable signal." This claim uses the same language as the Beuaregard claim. If it can show that "non-transitory" is not a limitation to a software claim, then a CRM includes a signal per se.

You may want to claim a "non-transitory computer-readable medium," which is recommended in the interim guidelines. You should then follow that with claims of "a computer-readable signal." This is so you are protected for both types of media.

Stating that it is a computer-readable signal claim demonstrates it is both reproducible and transferrable. If the transmissions are not set up for reproducibility, add it as a modifier. For example, you can state it is "a reproducible computer-readable signal." This will ensure your invention is clearly fixed in the same way that current software is fixed in tangible media.

How Avoid a Transitory Signal Rejection on Your Patent Application

To prevent a transitory signal rejection on your patent application, be sure you are drafting your claims without the limiting "non-transitory" language. Not all Examiners will reject claims or insist you state that your signal is a "non transitory computer readable media."

If the Examiner rejects the claims and insists on that language, then you will need to give a careful explanation to the Office Action. Such an explanation may also need to be included in the specification before filing the application. But it's possible to amend it later. This can help to defend against narrow claim interpretation.

It is not guaranteed that all non-transitory claims will run into this issue. But it is important to know that it can happen. You want to be able to understand what the rejection means and how to deal with it without narrowing and weakening your patent case.

If you need help with non-transitory claims, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law. They average 14 years of legal experience, including work with or on behalf of companies such as Google, Stripe, and Twilio.