Publications
(E-Commerce) PTO to Provide More Comprehensive Review of Electronic-Commerce/Business Methods Patent Applications
In 1998, the Court of Appeals for the Federal Circuit held that a mutual
fund processing system constituted a useful application of a
mathematical algorithm and was thus entitled to patent protection. State
Street Bank and Trust v. Signature Financial Group , 149 F.3d 1368, 47
USPQ2d 1596 (Fed. Cir. 1998). The decision has created a boom in patent
applications for business method-related software. According to the
Commissioner of Patents, the number of Class 705 patents (data
processing: financial, business practice, management, or cost/price
determination) rose from just under 1,300 in 1998 to 2,600 in 1999.
In light of this dramatic increase in patent application filings and
recent related controversies, the U.S. Patent and Trademark Office has
announced that it will implement more comprehensive reviews for patent
applications seeking protection for e-commerce-based business methods.
As part of the increased level of review, mandatory searches for all
applications under Class 705 will include a classified U.S. patent
document search and a text search of U.S. Patent documents, foreign
patent documents, and non-patent literature. Non-patent literature
searches will include required search areas mapped or correlated to U.S.
classification system for Class 705, which will provide a more fully
developed prior art record. In addition, the sampling size for quality
review by the Office of Patent Quality Review will be substantially
expanded, and a new in-process review of office actions will be
introduced with an emphasis on the field of search of the prior art and
patentability determinations.
recent related controversies, the U.S. Patent and Trademark Office has
announced that it will implement more comprehensive reviews for patent
applications seeking protection for e-commerce-based business methods.
As part of the increased level of review, mandatory searches for all
applications under Class 705 will include a classified U.S. patent
document search and a text search of U.S. Patent documents, foreign
patent documents, and non-patent literature. Non-patent literature
searches will include required search areas mapped or correlated to U.S.
classification system for Class 705, which will provide a more fully
developed prior art record. In addition, the sampling size for quality
review by the Office of Patent Quality Review will be substantially
expanded, and a new in-process review of office actions will be
introduced with an emphasis on the field of search of the prior art and
patentability determinations.
As part of its business methods patent initiative, the PTO is also
establishing a formal customer partnership with the software, Internet,
and e-commerce industry that is similar to one in place with the
biotechnology industry. Part of the industry outreach will include a
round-table forum this summer to discuss issues surrounding business
method patents. The PTO also intends to make a greater effort to obtain
industry feedback on prior art resources, to solicit input on other
databases and information collections and sources, and to expand prior
art collections. The PTO will also enhance technical training for
examiners and continue current training efforts and partnerships with
industry associations and various individual corporate sponsors.
establishing a formal customer partnership with the software, Internet,
and e-commerce industry that is similar to one in place with the
biotechnology industry. Part of the industry outreach will include a
round-table forum this summer to discuss issues surrounding business
method patents. The PTO also intends to make a greater effort to obtain
industry feedback on prior art resources, to solicit input on other
databases and information collections and sources, and to expand prior
art collections. The PTO will also enhance technical training for
examiners and continue current training efforts and partnerships with
industry associations and various individual corporate sponsors.
For further information contact Todd E. Garabedian, Ph.D. at 203-498-4483, tgarabedian@wiggin.com