The United States Patent and Trademark Office (USPTO) recently held a meeting to discuss the history behind computer-implemented business method patents and identify ways to improve the USPTO's current approach to such patent applications.On March 29, 2000, the USPTO announced the business method patent initiative, which includes outreach and quality programmes. The industry outreach programmes encompass the establishment of a customer partnership with industry, the convening of a round table forum, and an effort to obtain industry responses on `prior art' issues.
The quality programmes encompass steps to enhance the technical training of examiners, revise the examination guidelines and examples, and expand the current prior art search activities. The number of patent applications related to computer-implemented business methods continues to grow, demonstrating that this method plays an important role.
Patents awarded to Amazon.com and Priceline.com in respect of business methods have been in the news for quite sometime. Amazon.com was granted a patent for "System and method for selecting rows from dimensional databases" on December 14, 1999, which is a one-click shopping process. Priceline's patent relates to the purchase offer management system. This is not a new development as business methods have been granted patents on earlier occasions. For example, companies have patents for the methods for the sale of airline tickets. However, the court's decision in State Street Bank vs.
Signature Financial Group Inc. about two years back stated that software that governs business methods can be patented provided it produces some tangible and useful result. It is reported that 600 out 1,61,000 patents awarded by USPTO were for software-related business methods.
A business method, which is specific and teaches the way of doing business, is patentable in the US provided it meets the basic requirements of novelty, non-obviousness and usefulness. According to Article 27 of the Trade Related Aspects of Intellectual Property Rights (TRIPS), a business method should be new, involve an inventive step (i.e., it is not obvious) and should be industrially applicable.
The search of `prior art' is also essential for any new method. Prior art includes the following:
Patent specifications made before the date of filing of the applicant's complete specifications;Any other document published in India or elsewhere before the date of filing of the applicant's complete specifications. This will cover foreign specifications, whether published in India or abroad, and text-books and periodicals published anywhere related to art in question, the only limitation being that they should be published before the date of filing of the applicant's complete specifications.It has to be sufficiently different from the `prior art' i.e., the publicly known cumulative technical experience and knowledge. An obvious modification of the `prior art' cannot be patented e.g., the method of sending a message through e-mail modified to sending a message through a web site.
Further, the disclosure of the method should be such that fellow practitioners can understand it. If the method is a general vision or a strategy, it may not be patentable. Old business methods, if made electronic, cannot be patented. One, therefore, gets a feeling that a business method would need to be software-based to qualify for a patent award.
For patenting of a business method an applicant has to ensure that it is non-obvious. The factors which establish that an invention is not obvious are:
The results achieved by a business method are unexpected and superior;The techniques used in the method were unworkable earlier;The problem solved by the new method was never recognised earlier; and the prior patents and/or literature are inoperative.The patent offices will have difficulty in establishing or verifying the novelty of such innovations because many methods either have not been recorded or are not available readily. There is still no debate about what can be considered comprehensive for a novelty search. However, it must be remembered that inventors are legally required to disclose all relevant prior art. If they do not, they run a risk of having the patents invalidated at a later date.
(The writer is Visiting Faculty on International Trade, Guru Jambheshwar University, Hissar)
Copyright © 2001 Indian Express Newspapers (Bombay) Ltd.
