The annual USPTO Business Methods Partnership meeting was held on Thursday, July 21 at the USPTO. This partnership meeting is an annual event hosted by the Business Methods (BM) area of the USPTO – Tech Center 3600. Companies, inventors and patent practitioners active in the business methods/e-commerce area are invited. Patent examiners were also invited, and the event was broadcast live on the web to examiners who could not be present in person.
Key USPTO Speakers included: Wynn Coggins, Director of TC 3600, and Vincent Millin, Appeal Conference Specialist for TC 3600. Peggy Focarino, Deputy Commissioner of Patents, opened the meeting. Erika Arner of Finnegan, Henderson moderated a panel discussion directed to “Owner/Applicant Perspectives on Business Method Patents.”
Business Methods Area of PTO
Wynn Coggins, Director of TC 3600, gave the keynote talk. She emphasized that class 705 seems to be returning to its electrical roots as a data processing class, with about 80% of the applications including a computer component. She also presented a number of statistics and information about the state of affairs in business methods examination at the USPTO:
- 28.9 months pendency to First Action in Class 705, down from 31.7 months at the end of FY2010, compared to 26.5 months USPTO-wide.
- 42.3 months pendency to Issue/Abandonment in Class 705, down from 46.7 months at the end of FY2010, compared to 33.9 months USPTO-wide.
- Allowance rate in class 705 has increased consistently from 13.6% in 2009 to 24.1% in 2011.
- Leading patent assignees for BM/e-commerce patents granted in 2006-2010 are IBM (590), Trading Technologies (186), and Microsoft (185).
- There are currently 324 examiners examining in Class 705, split between workgroups 3620, 3680, and 3690.
- The Office has found great success in the Patent Examiner Technical Training Program, in which industry experts share their technical knowledge on prior art and industry standards with patent examiners.
- Examiners in business methods have the following education and experience:
- Technical degrees:
- Electrical engineering: 41%
- Mechanical engineering: 22%
- Industrial engineering: 11%
- Biology: 10%
- Juris Doctorate: 18%
- Masters of Business Adminstration: 17%
Director Coggins also indicated that the Office struggles with and is awaiting guidance on the question of where to draw the line between a general purpose computer and a special purpose computer. So, focusing on capturing the practical application of the underlying subject matter in the claims is very helpful for the examiners.
She also presented an updated directory of SPEs and specialists with contact information, which we can provide if needed.
Legal Update: 35 U.S.C. § 101
Director Coggins also discussed practical tips for examination under 35 U.S.C. § 101. She emphasized that currently, the USPTO relies on three different documents for guidance:
- Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, August ‘09
- Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, July ‘10
- Subject Matter Eligibility of Computer Readable Media, January ’10
If a specification does not differentiate between transitory and non-transitory media, the claims will generally be considered non-statutory unless they recite a “non-transitory” medium or the like. Her suggestions to comply with § 101 include managing the “broadest reasonable interpretation” of the claims, and minimizing the factors weighing against eligibility. To keep the examiner on point regarding the scope of the claims, Director Coggins said it would be helpful to choose terms with clear meanings, rather than words that can be considered software per se (e.g., “report generator,” “portfolio manager,” etc.), and to provide clear guidance in the specification regarding the scope of the terms.
Although adding a machine into the claims is an often-used strategy for making method claims patent-eligible, Director Coggins also identified a number of common eligibility issues to avoid:
- No explicit nor inherent recitation of a machine
- A machine appears in the method, but in a manner that may not be a limitation on the method according to claim interpretation principles
- machine appears in the method, but in a manner that may not be a limitation on the method according to its broadest reasonable interpretation
- A machine appears in the claim, but is merely nominally, insignificantly, or tangentially related
- A claim that recites, but does not practically apply, a general concept