Business Method Update and Briefing

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Business 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
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What 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.

3
What 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.

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Class 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

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Class 705 Comprises

• A collection of 20 financial and business data
  processing areas.
• Its four largest categories are

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The Four Categories.

• Determining Who Your Customers Are, and the
  Products/Services They Need/Want.
• Operations Research - Market Analysis

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The 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

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The Four Categories.

1. 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

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The Four Categories.

• Tracking Resources, Money, And Products.
• Human Resource Management
• Scheduling
• Accounting
• Inventory Monitoring

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Class 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

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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

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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

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Filing Trends in Class 705
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Pendency 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

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Assignees 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

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Examiner 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.
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Business 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

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Prior 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. 

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Reaching 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

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Prior 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.

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Legal 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.

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Legal 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.

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Legal 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.

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Legal Update

• An example of a method claim that would not
  qualify as a statutory process would be a claim
  that recites purely mental steps.

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Thank You