Title: Business Method Update and Briefing
1Business Method Update and Briefing for the
Patent Lawyers Club of Washington April 21,
2009 by Wynn Coggins Group Director,
Technology Center 3600 wynn.coggins_at_uspto.gov
2What is a Business Method?
- The term Business Method is a generic term that
has been used to describe many types of process
and apparatus claims. - There has been confusion regarding business
method claims vs. other process claims.
3What is a Business Method?
- Not all business method- type claims are
classified in Class 705. Only computer-implemented
processes related to e-commerce, the Internet
and data processing involving finance, business
practices, management or cost/price determination
are classified in Class 705. Other process claims
are classified and examined according to their
structure or field of use. - For example, gaming methods and teaching methods
are classified elsewhere.
4Class 705
- Title
- Data processing Financial, Business Practice,
Management, or Cost/Price Determination - Definition
- Machines and methods for performing data
processing or calculation operations in the - Practice, administration or management of an
enterprise, or - Processing of financial data, or
- Determination of the charge for goods or
services
5Class 705 Comprises
- A collection of 20 financial and business data
processing areas. - Its four largest categories are
6The Four Categories.
- Determining Who Your Customers Are, and the
Products/Services They Need/Want. - Operations Research - Market Analysis
7The Four Categories.
- Informing Customers You Exist, Showing Them Your
Products Services, and Getting Them to
Purchase. - Advertising Management
- Catalog Systems
- Incentive Programs
- Redemption of Coupons
8The Four Categories.
- Exchanging Money and Credit Before, During, and
After the Business Transaction.
- Credit and Loan Processing
- Point of Sale Systems
- Billing
- Funds Transfer
- Banking
- Clearinghouses
- Tax Processing
- Investment Planning
9The Four Categories.
- Tracking Resources, Money, And Products.
- Human Resource Management
- Scheduling
- Accounting
- Inventory Monitoring
10Class 705 Workgroups3620, 3680, 3690
- 3620 Workgroup
- AU 3621 - Business Cryptography, Andrew Fischer,
SPE - AU 3622 - Incentive Programs/Coupons, Eric
Stamber, SPE - AU 3623 - Operations Research/Voting, Beth Van
Doren, Acting SPE - AU 3625 - E-shopping, Jeffrey Smith, SPE
- AU 3626 - Health Care/Insurance, Christopher
(Luke) Gilligan - AU 3627 - Point-of-Sale/Inventory/Accounting, F.
Ryan Zeender, SPE - AU 3628 - Cost/Price, Reservations,
Transportation John Hayes, SPE - AU 3629 Business Processing, John Weiss, SPE
11 Class 705 Workgroups3620, 3680, 3690
- 3680 Workgroup
- AU 3685 Business Cryptography, Calvin Hewitt,
SPE - AU 3686 Health Care/Insurance, Jerry OConner,
SPE - AU 3687 - Point-of-Sale/Inventory/Accounting,
Matthew Gart, SPE - AU 3688 - Incentive Programs/Coupons, James
Myhre, SPE - AU 3689 - Business Processing, Janice Mooneyham,
SPE
12 Class 705 Workgroups3620, 3680, 3690
- 3690 Workgroup (Finance and Banking)
- AU 3691 - Finance Banking, Alexander
Kalinowski, SPE - AU 3692 - Finance Banking, Kambiz Abdi, SPE
- AU 3693 - Finance Banking, James (Jay) Kramer,
SPE - AU 3694 - Finance Banking, James Trammell, SPE
- AU 3695 Finance Banking, Charles Kyle, SPE
- AU 3696 Finance Banking, Tom Dixon, SPE
13Filing Trends in Class 705
14Pendency in Class 705 (At Mid-year 2009)
- Current Pendency to First Action 31.6 months
- Down from 41.4 months at the mid year 2008.
- For comparison, corps-wide current pendency to
first action 26.9 months - Current Pendency to Issue/Abandonment
- 46.1 months
- Down from 56.3 months at mid year 2008
- For comparison, corps-wide current pendency to
issue/abandonment 33.7 months -
15Assignees for Patent Grants in Class 705
(2003-2007)
- NCR 49
- HITACHI 46
- CONTENTGUARD 43
- WALKER DIGITAL 39
- FIRST DATA 36
- MATSUSHITA ELECTRONICS 34
- IBM 259
- PITNEY-BOWES 95
- FUJITSU 66
- SONY 59
- HP 58
- MICROSOFT 55
16Examiner Growth
-
- Year FY 01 FY 02 FY 03 FY
04 FY 05 FY 06_ FY07 FY 08 FY 09
- Number of
- Examiners 77 125 110
116 133 147 260 300
328 - Patents 433 492 495
289 711 1,191 1,330 1,643
- Issued
End of year Data Not Yet Available.
17Business Methods Web Site
http//www.uspto.gov/web/menu/pbmethod/
Examples of what is posted
- Filings and Issue Data (1997 2008)
- Updated annually
- Business methods Allowance Checklist
- Very helpful for applicants
- Indicates what examiners must verify prior to
allowing an application - Guidelines on when an electronic document is
considered prior art. - 103 rejection examples
- Class 705 core databases and classification
definitions - Revised MPEP 2106 Examination guidelines for
business methods - Guidance for Examining Process Claims in view of
In re Bilski, signed January 7, 2009 - The paper Successfully Preparing and Prosecuting
a Business Method Patent Application
18Prior Art
- The USPTO is always looking for ways to ensure
that examiners have the best prior art as early
as possible in the examination process. Our data
shows that when examiners have the right art in
front of them, they make the right decisions.
19Reaching Out to Our Industry Partners
- We have successfully partnered with industry to
gain valuable input on prior art resources. They
have shared - Databases
- Books, Technical Reports, and Conference
Proceedings, Journals and - Web-based Resources
20Prior User Rights for Business Method Patents -
Defense to Infringement 35 U.S.C. 273
- In the American Inventors Protection Act of 1999
(AIPA), Congress created a defense to
infringement suits with respect to any subject
matter that would otherwise infringe one or more
claims for a business method in the patent being
asserted against a person, if such person had,
acting in good faith, actually reduced the
subject matter to practice at least 1 year before
the effective filing date of such patent, and
commercially used the subject matter before the
effective filing date of such patent. - This defense alone does not invalidate the patent
itself simply allows the accused infringer
relief against an infringement suit. - We are not aware of any decision on a 273
defense.
21Legal Update
- In re Bilski
- U.S. Court of Appeals for the Federal Circuit
(CAFC) issued the en banc ruling 10/30/08. - The courts opinion clarified the standards
applicable in determining whether a claimed
method constitutes a statutory process under 35
U.S.C. 101.
22Legal Update
- In view of the Bilski decision, the USPTOs
Interim Guidelines for Examination of Patent
Applications for Patent Subject Matter
Eligibility are being redrafted to reflect the
most current standards for subject matter
eligibility. - Until those guidelines are completed, examiners
have been instructed to follow the current patent
subject matter eligibility guidelines appearing
in MPEP 2106, with the modification set forth in
the January 7, 2009 memorandum entitled Guidance
for Examining Process Claims in view of In re
Bilski.
23Legal Update
- The January 7, 2009 memorandum has been provided
to assist examiners in determining whether a
method claim qualifies as a patent eligible
process under 35 USC 101. - A method claim must meet a specialized, limited
meaning to qualify as a patent-eligible process
claim. As clarified in Bilski, the test for a
method claim is whether the claimed method is (1)
tied to a particular machine or apparatus, or (2)
transforms a particular article to a different
state or thing. This is called the
machine-or-transformation test. -
- If neither of these requirements is met by the
claim, the method is not a patent eligible
process under 101 and should be rejected as
being directed to non-statutory subject matter.
24Legal Update
- An example of a method claim that would not
qualify as a statutory process would be a claim
that recites purely mental steps.
25Thank You