Business method patent

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Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.[1]

Background[edit]

In general, inventions are eligible for patent protection if they pass the tests of patentability: patentable subject matter, novelty, inventive step or non-obviousness, and industrial applicability (or utility).

A business method may be defined as "a method of operating any aspect of an economic enterprise".[2]

History[edit]

France[edit]

First page of Dousset 1792 French patent for a tontine

On January 7, 1791, France passed a patent law that stated that "Any new discovery or invention, in all types of industry, is owned by its author...". Inventors paid a fee depending upon the desired term of the patent (5, 10, 15 years), filed a description of the invention and were granted a patent. There was no preexamination. Validity was determined in courts. 14 out of 48 of the initial patents were for financial inventions. In June 1792, for example, a patent was issued to inventor F. P. Dousset for a type of tontine in combination with a lottery.[3] These patents raised concerns and were banned and declared invalid in an amendment to the law passed in 1792.

Britain[edit]

In Britain, a patent was issued in 1778 to John Knox for a “[p]lan for assurances on lives of persons from 10 to 80 years of age.”[4] At this time in British law, patents could only be issued for manufactured objects, not manufacturing processes.

United States[edit]

Patents have been granted in the United States on methods for doing business since the US patent system was established in 1790.[5] The first financial patent was granted on March 19, 1799, to Jacob Perkins of Massachusetts for an invention for "Detecting Counterfeit Notes." All details of Mr. Perkins' invention, which presumably was a device or process in the printing art, were lost in the great Patent Office fire of 1836. Its existence is only known from other sources.

Header from 1840 US 1700  on a new type of private lottery.

The first financial patent for which any detailed written description survives was to a printing method entitled "A Mode of Preventing Counterfeiting" granted to John Kneass on April 28, 1815.[6] The first fifty years of the U.S. Patent Office saw the granting of forty-one financial patents in the arts of bank notes (2 patents), bills of credit (1), bills of exchange (1), check blanks (4); detecting and preventing counterfeiting (10), coin counting (1), interest calculation tables (5), and lotteries (17).

On the other hand, cases such as Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908), which held that a bookkeeping system to prevent embezzlement by waiters was unpatentable, were often read to imply a "business method exception", in which business methods are unpatentable.[7] Another such case was Joseph E. Seagram & Sons v. Marzell, 180 F.2d 26 (D.C. Cir. 1950), in which the court held that a patent on “blind testing” whiskey blends for consumer preferences would be “a serious restraint upon the advance of science and industry” and therefore should be refused.

A diagram showing the growth of business method patents

For many years, the USPTO took the position that "methods of doing business" were not patentable. With the emergence in the 1980 and 1990s of patent applications on internet or computer enabled methods of doing commerce, however, USPTO found that it was no longer practical to determine if a particular computer implemented invention was a technological invention or a business invention. Consequently they took the position that examiners would not have to determine if a claimed invention was a method of doing business or not. They would determine patentability based on the same statutory requirements as any other invention.[8][9]

The subsequent allowance of patents on computer implemented methods for doing business was challenged in the 1998 State Street Bank v. Signature Financial Group, (47 USPQ 2d 1596 (CAFC 1998)). The court affirmed the position of the USPTO and rejected the theory that a "method of doing business" was excluded subject matter. The court further confirmed this principle with AT&T Corp. v. Excel Communications, Inc., (50 USPQ 2d 1447 (Fed. Cir. 1999)).

The USPTO continued to require, however, that business method inventions must apply, involve, use or advance the "technological arts" in order to be patentable. This was based on an unpublished decision of the U.S. Board of Patent Appeals and Interferences, Ex Parte Bowman, 61 USPQ2d 1665, 1671 (Bd Pat. App. & Inter. 2001). This requirement could be met by merely requiring that the invention be carried out on a computer.

In October 2005 the USPTO's own administrative judges overturned this position in a majority decision of the board in Ex Parte Lundgren, Appeal No. 2003-2088 (BPAI 2005). The board ruled that the "technological arts" requirement could not be sustained,[10] as no such requirement existed in law.

In light of Ex Parte Lundgren, the USPTO has issued interim guidelines for patent examiners to determine if a given claimed invention meets the statutory requirements of being a process, manufacture, composition of matter or machine (35 USC 101).[11] These guidelines assert that a process, including a process for doing business, must produce a concrete, useful and tangible result in order to be patentable. It does not matter if the process is within the traditional technological arts or not. A price for a financial product, for example, is considered to be a concrete useful and tangible result (see State Street Bank v. Signature Financial Group).

The USPTO has reasserted its position that literary works, compositions of music, compilations of data, legal documents (such as insurance policies), and forms of energy (such as data packets transmitted over the Internet), are not considered "manufactures" and hence, by themselves, are not patentable. Nonetheless, the USPTO has requested comments from the public on this position.

In 2006, Justice Kennedy of the US Supreme Court cast aspersions on business method patents when he commented that some of them were of "potential vagueness and suspect validity". This was expressed in a concurring opinion to the case of eBay Inc. v. MercExchange, L.L.C.[12] There has been considerable speculation as to how this opinion might affect future business method patent litigation, particularly where a patent owner seeks an injunction to stop an infringer.[13] In 2006, three Justices (Breyer, J., joined by Stevens and Souter, JJ.) dissented from the dismissal of certiorari as improvidently granted in Laboratory Corp. of Am. Holdings v. Metabolite Labs., Inc.,[14] arguing that State Street enunciated an erroneous legal test under which processes that the Supreme Court had held patent-ineligible would be held patent-eligible.

In Bilski v. Kappos, 561 U.S. Supreme Court 08-964 (November, 2010),[15] the Supreme Court held that the machine-or-transformation test is not the sole test for determining whether a claim comes within the "process" subject matter of the Patent Act and is thus patent eligible. Rather than being an exclusive test for eligibility, the machine-or-transformation test is "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101."[1] With respect to the facts of the case before it, the Supreme Court affirmed the Federal Circuit's en banc rejection of an application for a patent on a method of hedging losses in one segment of the energy industry by making investments in other segments of that industry, on the basis that the abstract investment strategy set forth in the application was an "abstract idea," making it ineligible under that exception to the general subject-matter areas listed in the Patent Act.

The Supreme Court's decision in Bilski v. Kappos affirmed but sharply qualified the Federal Circuit's October 2008 en banc decision in In re Bilski.[16] The decision announced a 2-branch "machine-or-transformation" test of patent-eligibility that, if it had been accepted as the exclusive live-or-die test for process patents, would have made ineligible many business-method patents granted in the last decade. Although the Supreme Court rejected its exclusive use, the test is still important as a "useful and important clue" for determining patent eligibility of claimed process inventions. First, processes that transform an article from one state or thing to another are patent-eligible regardless of whether their use requires a machine. Processes involving transformation of abstract financial data, such as that claimed in machine format in State Street, are probably patent-ineligible. Second, processes that do not make patent-eligible transformations are patent-eligible only if they are claimed to be carried out with a “particular machine.” It appears that a programmed general-purpose digital computer is not a particular machine, for this purpose. It is unclear whether a particular machine must be novel and nonobvious, and specially adapted for carrying out the new process. The Supreme Court’s decision in Parker v. Flook[17] seems to call for that, but the Bilski court did not choose to opine on this point.[18]

A cutting-edge issue in regard to business-method patents is whether they are patent-ineligible because they are not "technological," regardless of whether they meet the other criteria of patent-eligibility and patentability. The majority opinion in In re Bilski refused to hold business methods categorically ineligible on any ground. Judge Mayer's dissent, however, seconded by Judges Dyk's and Linn's concurring opinion, insisted that the US patent system is limited to technology and therefore it excludes trade and business expedients. Judge Mayer equated the US Constitution's limitation of patent grants to the "useful arts"[19] to a limitation to technology, relying on case law stating that technology is the modern equivalent of useful arts.[20] The Supreme Court of the United States granted certiorari in the matter of In re Bilski and the case was argued on November 9, 2009.[21][22]

In November 2007, the United States Internal Revenue Service proposed rules that would require tax filers who paid a license fee for a tax patent to declare that to the IRS.[23]

Jurisdictions[edit]

Whether a business method is regarded as patentable subject matter depends on the legal jurisdiction. The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) does not specifically address business method patents.

Australia[edit]

There is no general prohibition on the patentability of business methods in Australia. Their patentability is determined by applying the tests used to determine the patentability of any type of invention. However, in the decision of Grant v Commissioner of Patents [2006] FCAFC 120, at paragraph [47], the Full Court of the Federal Court of Australia held that a business method will only be patentable if it has a physical aspect, being a concrete, tangible, physical, or observable effect or phenomenon. Accordingly, 'pure' business methods, being those that do not have a physical aspect, are not patentable in Australia.

It has been suggested that Grant v Commissioner of Patents was wrongly decided because the court failed to properly apply the existing law as set out in the decision of the High Court of Australia in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 and that the court should not have imposed a physical aspect requirement.[24]

Canada[edit]

A business method must be more than an abstract idea or theorem, otherwise it is not patentable in Canada. In order to be patentable, the business method must have a practical application.

However, a business method that is an abstract idea does not become patentable merely because it has a practical application. For example, a particular business method that is an abstract idea does not become patentable merely because it is programmed into a computer as an algorithm. For a business method to be patentable, the algorithm cannot be the whole invention, but only one aspect of a novel combination. See Amazon.com, Inc. v The Attorney General of Canada, 2011 FCA 328, November 24, 2011[25]

Brazil[edit]

According to Brazilian Patent Law 9279, "commercial, accounting, financial, educational, advertising, raffling, and inspection schemes, plans, principles or methods" are not considered to be inventions or Utility Models.[26]

European Patent Convention[edit]

Under the European Patent Convention, "Schemes, rules and methods for (...) doing business" are not regarded as being inventions and are not patentable, "to the extent that a European patent application or European patent relates to such subject-matter or activities as such".[27]

But if a new method solves a technical, rather than a purely administrative, problem then it may indeed be patentable. (For example, an improved design of letter-franking machine).

India[edit]

Per Section 3(k), business methods are not patentable per se. However they are patentable if a new method solves a "technical" problem and an apparatus/system is involved.[citation needed]

Japan[edit]

In Japan, business methods are well recognized and accepted as patentable subject matter. The legal standard used to assess whether a business method is patentable requires that inventions be "a highly advanced creation of technical ideas by which a law of nature is utilized."

Patents are not issued solely for business methods. The business method must contain a technical aspect that is both tangible and real.

However this requirement may be satisfied simply by specifying that the method is implemented using a computer.

United States[edit]

There is no exclusion for methods of doing business under US patent law. Patent applications for methods of doing business are examined using the same standards as any other invention.

Current case law (In re Bilski) requires that a method for doing business must be tied to a particular machine (e.g. computer) or transform matter. This case law, however, is under review by the US Supreme Court. In oral arguments presented in November 2009, the justices of the Supreme Court seemed sceptical of the plaintiff's arguments that a business method did not have to be tied to a machine.[28] The Supreme Court decision in Bilski v. Kappos on June 28, 2010 ruled that Bilski's patent was not valid. However, the decision was widely criticized[by whom?] for resolving the immediate problem with Bilski's business method patent while offering little guidance on the actual issue of business method patentability. Ultimately, the court rejected the more 'bright-line' test proposed by the federal circuit as too rigid and resolved the question by restating the statute's broad goals.[citation needed] Therefore, business methods continue to be patentable subject matter; however, the question remains as to how exactly to decide that patentability.[citation needed]

On average, the USPTO will issue 20 rejections for every allowance of insurance and finance patent applications. Patent applications in more conventional technologies, such as electrical connectors will only get 2 rejections for every allowance.[29]

Delays in examination[edit]

Average delays to first office action for Business Method Patents[30]

The USPTO is experiencing significant delays in examining business method patents.[when?] Projected delays of up to 14 years have been reported.[31] The delays are due to a combination of the step change in business method filings as of the State Street Bank decision and the difficulty in hiring qualified examiners with financial services backgrounds (e.g. insurance and banking). It has also been reported, however,[32] that inventors can get their patent applications examined in as little as six months, if they submit a Petition to make special. A petition to make special is a procedure for getting particular patents examined early.

Peer to Patent[edit]

In July 2008, the USPTO announced that business method patent applications would be opened up to public commentary as part of the Peer to patent pilot program.[33] Only applicants that volunteer and sign a waiver will have their applications be part of the program. They must apply no later than one month after their applications are published.[34] Those that do volunteer will have their applications examined right away. Peer-to-Patent projects have also run, or are also running, in Australia (see Peer-to-Patent Australia), Japan, South Korea and the United Kingdom.

Classification[edit]

In the 8th edition of the International Patent Classification (IPC), which entered into force on January 1, 2006, a special subclass has been created for business methods: "G06Q" (Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes). In the previous editions, business methods were classified in "G06F 17/60". This is purely a classification matter and will not change the patent laws however.

US patents describing methods of doing business that involve the use of a computer are classified in Class 705 ("data processing: financial, business practice, management or cost/price determination"). Class 705 includes sub-categories for industries such as health care, insurance, electronic shopping, inventory management, accounting, and finance.

See also[edit]

References[edit]

  1. ^ Rutkowski, T. "Carriers Unaware of IP Ownership Threats and Opportunities", Insurance Networking News, August 1, 2005
  2. ^ http://www.acip.gov.au/library/bsreport.pdf
  3. ^ Description des Machines et Procédés Specifies Dans Les Brévets D’Invention, De Perfectionnement et D’Importation, 1811 pp 544 et seq.
  4. ^ Bilski v. Kappos, USPTO Brief for the Respondent, September 30, 2009, p30
  5. ^ “Automated Financial or Management Data Processing Methods (Business Methods)” USPTO white paper’
  6. ^ Kneass, John, “A Mode of Preventing Counterfeiting”, US patent x2301
  7. ^ P. Jason Hadley, Jung Hahm, Tanya Harding, Steven Lee, Malcolm T. Meeks, Richard Polidi. "commentary on State Street Bank". University of Cornell Law School. 
  8. ^ State Street Bank v. Signature Financial, decided July 23, 1998, citing the then current MPEP Sec. 706.03(a) (1994)
  9. ^ "Section 2106, Patentable Subject Matter – Computer-Related". MPEP. Seventh Edition (July 1998). 
  10. ^ http://patentlaw.typepad.com/patent/2005/10/patent_board_el.html
  11. ^ http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf
  12. ^ eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006), Kennedy, J., concurring, page 2
  13. ^ “Injunction Mud” The Patent Prospector, May 16, 2006
  14. ^ 548 U.S. 124 (2006).
  15. ^ US Supreme Court. "BILSKI ET AL. v. KAPPOS, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK OFFICE". US Supreme Court. Retrieved 26 April 2013. 
  16. ^ — F.3d —, 88 U.S.P.Q.2d 1385 (2008).
  17. ^ 437 U.S. 584 (1978).
  18. ^ The two-branch test is based on the decisions of the Supreme Court in its patent-eligibility trilogy some three decades ago – Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); and Diamond v. Diehr, 450 U.S. 175 (1981).
  19. ^ Article I, section 8, clause 8 of the Constitution Gives Congress the power “To promote the Progress of…useful Arts” by granting patents. The Supreme Court has held that the grant of power is also a limitation on congressional power. Graham v. John Deere Co., 383 U.S. 1, 5–6 (1966).
  20. ^ See, for example, Malla Pollack, The Multiple Unconstitutionality of Business Method Patents, 28 Rutgers Computer & Tech. L.J. 61, 96 (2002; Micro Law, "What Kinds of Computer-Software-Related Advances (if Any) Are Eligible for Patents? Part II: The Useful Arts Requirement," IEEE MICRO (Sept.-Oct. 2008) (available at http://docs.law.gwu.edu/facweb/claw/KindsElg-II.pdf and http://ieeexplore.ieee.org/stamp/stamp.jsp?arnumber=4659278&isnumber=4659262.pdf ).
  21. ^ http://www.supremecourt.gov/oral_arguments/argument_transcripts/08-964.pdf Transcript of Oral Argument (PDF) in In re Bilski (retrieved Nov. 10, 2009)
  22. ^ http://www.scotuswiki.com/index.php?title=Bilski_v._Kappos Links to Briefs in In re Bilski (retrieved Nov. 10, 2009)
  23. ^ IRS Patent Transactions Rule Changes, Federal Register / Vol. 72, No. 186 / Wednesday, September 26, 2007 / Proposed Rules 54615
  24. ^ Ben McEniery, ‘Patents for Intangible Inventions in Australia After Grant v Commissioner of Patents (Part 1)’ (2007) 13(2) Computer and Telecommunications Law Review 70; (Online eprints version) and Ben McEniery, ‘Patents for Intangible Inventions in Australia After Grant v Commissioner of Patents (Part 2)’ (2007) 13(3) Computer and Telecommunications Law Review 100 (Online eprints version).
  25. ^ Amazon.com, Inc. v The Attorney General of Canada, 2011 FCA 328, November 24, 2011
  26. ^ http://www.wipo.int/clea/en/text_html.jsp?lang=EN&id=515
  27. ^ Article 52(2)(c) and (3) EPC
  28. ^ Court Is "Cool to Patents on Methods" Wall Street Journal, Nov 10, 2009
  29. ^ Nowotarski, Mark, “Reducing Patent Backlog and Prosecution Costs Using PAIR Data”, IP watchdog blog, August 16, 2010
  30. ^ Nowotarski, "How long will it take to get a patent reviewed?" Insurance IP Bulletin, February 2008
  31. ^ http://weblog.ipcentral.info/archives/2006/06/rip_van_winkle.html
  32. ^ Nowotarski, "Accelerated Examination", Insurance IP Bulletin, June 2006
  33. ^ USPTO announcement of Peer to Patent expansion, July 16, 2008
  34. ^ Mark Nowotarski, "Patent Q/A: Peer to Patent", Insurance IP Bulletin, August 15, 2008

External links[edit]

Papers[edit]