Transcript Business Method Update and Briefing for the Business Methods Partnership Meeting July 15, 2009 by Wynn Coggins Group Director, Technology Center 3600 [email protected].

Business Method Update and Briefing
for the
Business Methods Partnership Meeting
July 15, 2009
by
Wynn Coggins
Group Director, Technology Center 3600
[email protected]
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 over the years.

There has been confusion regarding business
method claims vs. other process and apparatus
claims.
What is a “ Business
Method”?

Not all “business method”- type claims are
classified in Class 705. Only computerimplemented 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 which are often considered business
methods are classified elsewhere.
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
Class 705 Comprises:

A collection of 20+ financial
and business data processing
areas.

Its four largest categories are:
The Four Categories….
1.
Determining Who Your
Customers Are, and the
Products/Services They
Need/Want.
 Operations Research
- Market Analysis
The Four Categories….
2.
Informing Customers You
Exist, Showing Them Your
Products & Services, and
Getting Them to Purchase.




Advertising Management
Catalog Systems
Incentive Programs
Redemption of Coupons
The Four Categories….
3.
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
The Four Categories….
4.
Tracking Resources,
Money, And Products.




Human Resource Management
Scheduling
Accounting
Inventory Monitoring
Class 705 Workgroups
3620, 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, 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
Class 705 Workgroups
3620, 3680, 3690
3680 Workgroup

AU 3685 – Business Cryptography, Calvin Hewitt, SPE

AU 3686 – Health Care/Insurance, Jerry O’Conner, SPE

AU 3687 - Point-of-Sale/Inventory/Accounting, Matthew Gart, SPE

AU 3688 - Incentive Programs/Coupons, Robert Weinhardt, SPE

AU 3689 - Business Processing, Janice Mooneyham, SPE
Class 705 Workgroups
3620, 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
Filing Trends in
Class 705
Business Methods Filing History
16000
14000
Applications Filed
12000
10000
8000
6000
4000
2000
0
1998
1999
2000
2001
2002
2003
Fiscal Year
2004
2005
2006
2007
2008
Pendency in Class 705
(At Mid-year 2009)

Pendency to First Action = 31.6 months
• Down from 41.4 months at the mid year 2008.
• For comparison, corps-wide pendency to first action = 26.9
months

Pendency to Issue/Abandonment
= 46.1 months
• Down from 56.3 months at mid year 2008
• For comparison, corps-wide pendency to
issue/abandonment = 33.7 months
Top Assignees for Patent Grants in
Class 705 (2004-2008)

IBM = 345

NCR = 56

PITNEY-BOWES = 112

HITACHI = 53

FUJITSU = 93


SONY = 91
FIRST DATA
CORPORATION = 51

HP = 70

12 TECHNOLOGIES US =
50

MICROSOFT = 83

CONTENTGUARD = 48

JP MORGAN CHASE BANK
= 43
Examiner Growth
Year
FY ‘01 FY ’02
FY ’03
FY ‘04
FY ’05 FY ’06_ FY’07 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.
Business Methods Web Site
http://www.uspto.gov/web/menu/pbmethod/
Examples of what is posted:

Filings and Issue Data (1997 – 2008)
•
Updated annually

Guidelines on when an electronic document is considered prior
art.

103 rejection examples

Class 705 core databases and classification definitions

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”
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.
 When examiners have the right art
in front of them, they make the right
decisions.
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
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.
Legal Update
•
In re Bilski
• U.S. Court of Appeals for the Federal
Circuit (CAFC) issued the en banc ruling
10/30/08.
• The court’s opinion addressed the
standards applicable in determining
whether a claimed method constitutes a
statutory “process” under 35 U.S.C. 101.
• On June 1, 2009, the United States
Supreme Court granted certiorari and will
review the CAFC ruling.
Legal Update
•
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.”
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 stated 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.
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.
Thank You