Download presentation
Presentation is loading. Please wait.
Published byDella Gilbert Modified over 8 years ago
1
International Intellectual Property Profs. Atik and Manheim Fall, 2006 Business Method Patents
2
Fall, 2006IIP2 Subject Matter 35 USC § 101 35 USC § 101 any “process, machine, manufacture, or composition of matter ” TRIPs Art. 27 TRIPs Art. 27 patents shall be available for any inventions, whether products or processes, in all fields of technology EPC Art. 52(1) EPC Art. 52(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step EPC Art. 52(2) – not regarded as inventions: EPC Art. 52(2) (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
3
Fall, 2006IIP3 Before State Street Bank Software-embodied business methods Recognized along with other software patents E.g., "Remote [Internet] Ordering System" "Interactive [Real Estate] Computer System ” Pure business methods Unpatentable subject matter “mathematical algorithms” were simply ideas Lacked novelty and non-obviousness In nature of social, not technological, innovation Unnecessary to incentivize business innovation Might actually impede it (ex. Amazon’s “one click” patent)
4
Fall, 2006IIP4 State Street Bank v. Signature Fin. (1998) U.S. Patent 5,193,056 (1993) U.S. Patent 5,193,056 “ Data Processing System for Financial Services ” Computer processing of data relating to a mutual fund instrument (pooled assets in a central “hub”) to maximize efficiency and tax advantages Not tied to dedicated software Holding: “the transformation of data... by a machine through a series of mathematical calculations … constitutes a practical application of a mathematical algorithm” § 101 extends to “"anything under the sun that is made by man." Chakrabarty
5
Fall, 2006IIP5 After State Street Bank Patent Rush Huge increase in BMP apps, mostly for e-commerce Controversy Stifle competition (w/o corresponding public benefit) BMPs are low quality; don’t really advance knowledge First Inventor Defense Act (1999) BMP unenforceable against one who began commercial use of BM 1 year before effective filing date of patent Business Method Patent Improvement Act (2000) Would raise the bar on non-obviousness Would allow opposition proceedings
6
Fall, 2006IIP6 US Rules following State Street General Principles Must satisfy subject matter: process or product Excluded: abstract ideas (mathematical algorithms), natural phenomena, laws of nature Utility: Capable of practical application Human mental steps? Technology (e.g. computer) req’d Rule abandoned Oct. 2005 USPTO Business Methods Website USPTO Business Methods Website Class 705: apparatus and corresponding methods for performing data processing [or calculating] operations Socratic method? New tax strategy?
7
Fall, 2006IIP7 Hitachi (2004) Examining Division Rejected for improper disclosure – Art. 83, 123(2) Main Request Claim 1 – “An automatic auction method executed in a server computer” First Auxiliary Request Claims 1/2 – “an auction method [& apparatus] additionally comprising means for receiving and storing "an amount condition" and "a product quantity status" Rejected as business method – Art. 52(2)(c) Second Auxiliary Request Claims 1/3 – “an auction method [& apparatus] which, in addition to the above, uses "rules" for determining the successful bidder” Dutch Auction
8
Fall, 2006IIP8 Hitachi (2004) Technical Board of Appeal “Invention” under Art. 52(1) must have “technical character” Mixed technical/non-technical inventions qualify Novelty & inventive step (non-obviousness) are examined after subject matter; not part of it Rejects (overrules) reading of 52(1) that invention must make a “technical contribution to the [prior] art” To be patentable, an invention Must use technical component (e.g., run on computer) Method (process) need not itself be technical
9
Fall, 2006IIP9 Hitachi (2004) Technical Board of Appeal Guidelines for Examination in the EPO 2.3.62.3.6 “specifying technical means for purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer technical character; without a prima facie technical character, application should be rejected” Guidelines rejected insofar as patentability depends on the content of the information being processed Claim 3 satisfies 52(1) subject matter Apparatus (server computer) is a “technical feature”
10
Fall, 2006IIP10 Hitachi (2004) Inventive step EPC Art. 56Art. 56 Also must have technical character Non-technical elements qualify if mixed w/ techn. Methods particularly designed for computer are ok Employ a technical element (the computer) General application methods not patentable (are in US) Must be non-obvious Successive raising of bids (subject matter of this patent) is obvious to one skilled in art; fails Art. 56 Holding Business methods are patentable if involve a technical component (and meet other criteria)
11
Fall, 2006IIP11 BMPs In Europe After Hitachi Board decision not uniformly received Patentability ultimately decided by local law Directive on Patentability of Computer- Implemented Inventions (2002/47/COD) Would harmonize Art. 52(2)(c) and Hitachi Exclude pure information processing (permitted by State Street Bank, if it has a practical application) BMPs ok if included specific technical processing Rejected (648-14) by Parliament, 6 July 2005 Disharmony still reigns in EU More on 2002/47/COD
12
Fall, 2006IIP12 Software/BM Patents Recap SW designed for specific computer process Patentable both in US and EU SW designed for generic computer process Patentable in US Patentable in EPO, but might not survive suit BM not requiring technical implementation Patentable in US Not patentable in EU Don’t forget novelty, non-obviousness, utility More on EU software patents
13
Fall, 2006IIP13 Software/BM Patents Elsewhere Australia Similar to US Japan (Examination Guidelines for Specific Fields)Examination Guidelines for Specific Fields Information processing using hardware Excluded: economic laws, arbitrary arrangements, mathematical methods, mental activity; or mere presentation of information Included: control of an apparatus, info processing based on the technical properties of an object UK Patent law based on EPC More on UK software patents
Similar presentations
© 2025 SlidePlayer.com. Inc.
All rights reserved.