- Business method patent
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. [ [http://ijlit.oxfordjournals.org/cgi/content/abstract/16/1/96 Can We Protect How We Do What We Do? A Consideration of Business Method Patents in Australia and Europe] , Judith McNamara and Lucy Cradduck, International Journal of Law and Information Technology Vol. 16 No. 1] Nonetheless, they have become important assets for both independent inventors and major corporations. [ [http://www.insurancenetworking.com/protected/article.cfm?articleId=3505 Rutkowski, T. "Carriers Unaware of IP Ownership Threats and Opportunities", Insurance Networking News, August 1, 2005] ]
In general, any
inventionis eligible for patent protection if it passes 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". [ [http://www.acip.gov.au/library/bsreport.pdf http://www.acip.gov.au/library/bsreport.pdf] ]
The legal situation as to whether business methods are allowed as patentable subject matter varies from legal
jurisdictionto jurisdiction. The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPS) does not specifically address business method patents.
United States, Australia, Japanand Singaporeare considered "safe havens" for business method patents. Lopsided|date=September 2008 The situation in Canada, Koreaand Taiwanis not clear. Fact|date=February 2007 Patent protection for business method patents in Israel, China, India, Mexico, and most of Europeis difficult.
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.
In a recent decision, "Grant v Commissioner of Patents"  FCAFC 120,  , 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.
However, 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. [ 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; [http://eprints.qut.edu.au/archive/00007006/01/7006.pdf (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 [http://eprints.qut.edu.au/archive/00007444/01/7444.pdf (Online eprints version)] .]
Pure business methods cannot be patented in Canada because of its pre-constitutional (in 1982) subordination to British Common Law. Article 1(2)(c) of the Patent Law of 1977 “It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of …. a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer.” For example, the Canadian counterpart application of the U.S. patent at issue in the State Street case has been abandoned.
However, a business method patent may be patented in Canada if the patent is claimed in a manner which provides that an apparatus is involved. See Mark B Eisen, Arts and Crafts: The Patentability of Business Methods in Canada (2001), 17 C.I.P. Rev. 279.
European Patent Convention
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". [ EPC Article|52|2)(c) and (3 ]
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).
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.Fact|date=June 2008
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.
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.
Patents have been granted in the United States on methods for doing business since the US patent system was established in
1790. [ [http://www.uspto.gov/web/menu/busmethp/index.html#origins “Automated Financial or Management Data Processing Methods (Business Methods)”] USPTO white paper’] 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.
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. [ [http://www.uspto.gov/web/menu/busmethp/x2301.html Kneass, John, “A Mode of Preventing Counterfeiting”, US patent x2301] ] 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. [cite web | url=http://www.law.cornell.edu/patent/comments/96_1327.htm | title=commentary on "State Street Bank" | author=P. Jason Hadley, Jung Hahm, Tanya Harding, Steven Lee, Malcolm T. Meeks, Richard Polidi | publisher=University of Cornell Law School]
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. [ [http://www.law.emory.edu/fedcircuit/july98/96-1327.wpd.html State Street Bank v. Signature Financial, decided July 23, 1998] , citing the then current MPEP Sec. 706.03(a) (1994)] [cite web | url=http://www.bitlaw.com/source/mpep/2106.html | title=Section 2106, Patentable Subject Matter - Computer-Related | work=MPEP | date=Seventh Edition (July 1998)]
The subsequent allowance of patents on computer implemented methods for doing business was challenged in the 1998 "State Street Bank v. Signature Financial Group, Inc.", (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 Corporation 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, [ [http://patentlaw.typepad.com/patent/2005/10/patent_board_el.html http://patentlaw.typepad.com/patent/2005/10/patent_board_el.html] ] 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). [ [http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf] ] 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 decision).
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 opinionto the case of " eBay Inc. v. MercExchange, L.L.C." [" eBay Inc. v. MercExchange, L.L.C.", 126 S. Ct. 1837 (2006), Kennedy, J., concurring, page 2] 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. [ [http://www.patenthawk.com/blog/2006/05/injunction_mud.html “Injunction Mud” The Patent Prospector, May 16, 2006] ]
In November 2007, the United States
Internal Revenue Serviceproposed rules that would require tax files who paid a license fee for a tax patentto declare that to the IRS. [ [http://www.regulations.gov/fdmspublic/component/main?main=DocumentDetail&d=IRS-2007-0112-0001 | IRS Patent Transactions Rule Changes, Federal Register / Vol. 72, No. 186 / Wednesday, September 26, 2007 / Proposed Rules 54615] ]
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.
Delays in examination
. A petition to make special is a procedure for getting particular patents examined early.
Peer to Patent
In July 2008, the USPTO announced that business method patent applications would be opened up to public commentary as part of the
Peer to patentpilot program. [http://www.uspto.gov/web/offices/com/speeches/08-26.htm USPTO announcement of Peer to Patent expansion, July 16, 2008] ] 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 [ [http://www.marketsandpatents.com/bulletin/IPB-08152008.html Mark Nowotarski, "Patent Q/A: Peer to Patent", Insurance IP Bulletin, August 15, 2008] ] . Those that do volunteer will have their applications examined right away. It is hoped that knowledgeable members of the public will review the applications and provide prior art and commentary to assist patent examiners in examining them.
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". In the previous editions, business methods were classified in "G06F17/60". This is purely a classification matter and will not change the patent laws however.
Software patent debate
State Street Bank & Trust Company v. Signature Financial Group, Inc."
T 931/95("Pension Benefit Systems Partnership") of August 9, 2000of the Boards of Appeal of the European Patent Office (EPO)
EBay v. MercExchange" [http://www.pagebox.net/bm3.html]
Public participation in patent examination
* [http://www.wipo.int/patent/law/en/developments/software.html "Software and Business Methods"] on the WIPO web site
* [http://www.acip.gov.au/library/bsreport.pdf Australia's Advisory Council on Intellectual Property, "Report on a Review of the Patenting of Business Systems", September 2003]
* [http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf United States Patent and Trademark Office, "Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility", October 2005]
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