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Business Method Patents

The USPTO PerspectivePrepared for the Casualty Actuary Society Annual Meeting November 15, 2004.

by

John J. Love

The United States Patent and Trademark Office

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The Patent Examination Process

Once a patent application is filed, it is initially classified in USPCS and assigned based on the claims in the application. The Patent Office is separated into basically three engineering areas which are:

chemical electrical mechanical

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The Patent Examination Process

The “first office action” reflects the examiner’s position on patentability re the application and the claims.

It is a written position which usually includes: rejections of claims citations of prior art possible indications of allowable subject

matter Most applications are initially rejected.

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The Patent Examination Process

Compact Prosecution Principles

The “second office action” is typically in the form of:

allowance or final rejection

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The Patent Examination Process

Appeal Process An applicant may appeal a second

rejection to the Board of Patent Appeals and Interferences. See 35 USC 134.

A Notice of Appeal followed by an Appeal Brief is required

The examiner will then prepare an Examiner’s Answer and the application is forwarded to the Board for decision.

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The Patent Examination Process

Reexamination Proceedings Questions concerning the patentability

of an issued patent based on prior art patents or printed publications may be addressed through the reexamination process. There are two types:

ex-parte reexamination inter-partes reexamination

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The Examination Process

AllowanceFirst

ExaminationFirstFirst

ExaminationExamination

Notice Notice of of

AllowanceAllowance

Second Examination

Amendment

SecondSecondExaminationExamination

Appeal Process

Appeal BriefAppealProcess

Rejection

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Patent Searches bythe PublicPatent Searches bythe Public

Can be performed:

At the USPTO At Patent and Trademark Depository Libraries

(PTDL’s) throughout the United States; more than 80 located in all 50 states, DC and Puerto Rico. List of PTDLs by state provided on USPTO web site

Online - www.uspto.gov

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Public On-Line Searching Public On-Line Searching

Text and image searching at the USPTO and 31 PTDL’s.

Commercial Data Bases (DIALOG, STN, ORBIT, etc.)

INTERNET (multitude of new files) USPTO web site

[http://www.uspto.gov]

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Examiner Searching in Business Methods

Mandatory Searching in issued patents and U.S. application publications (according to our classification schedule) WEST (text) - electronic search of patents NPL - electronic search of non-patent

literature Search Strategy Advisory Panel

Consists of senior examiners and search experts. A resource examiners can consult to get assistance on searches

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Class 705 Art Units

AU 3621 - Business Cryptography AU 3622 - Incentive Programs/Coupons AU 3623 - Operations Research, Voting,

Transportation AU 3624 - Finance & Banking (even number

applications) AU 3625 - E-shopping AU 3626 - Health Care/Insurance AU 3627 - Point of sale/Inventory/Accounting AU 3628 - Finance & Banking (odd numbered

applications) AU 3629 – Business Processing, Cost/Price,

Reservations

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Top Assignees by Patent Grants

1999-2003

Fujitsu LTD:59 patents NCR: 58 patents (cash registers/e-commerce) Hitachi: 46 patents (cash registers/e-commerce) Walker Digital: 46 patents

Citibank N.A. 30 patents (e-commerce)Microsoft: 30 patents (e-commerce) AT&T: 28 patents (e-commerce) Matsushita Electric: 24 patents (e-commerce)

IBM: 145 patents (cash registers/e-commerce) Pitney-Bowes: 90 patents (postage/utility metering)

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Filing Trends in 705

Filing Trends for Class 705Fiscal Years 1997-2003

0

1000

2000

3000

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6000

7000

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9000

10000

1997 1998 1999 2000 2001 2002 2003

Year

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Examiner Growth

Year FY ‘99 FY ’00 FY ‘01 FY ’02 FY ’03

#Examiners 17 33 77 125 110

#Patents 585 899 433 492 495Issued

Allowance * 55% 45% 26% 16%Rate

* Data not available

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Distribution of Business Applications (FY 2002 data)

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Business Practice

HealthCare

Insurance

Reservations

Operations Research

Coupons

Point of Sale

E-Shopping

InventoryManangementAccounting

Finance

Business Crypto

Cost/Price

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Second Pair of Eyes

All applications issued in class 705 go through a 2nd level of review Ensures search requirements are met Reasons for Allowance in every case Scope of the Claims is appropriate

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Industry Outreach

Customer Partnership Since September, 2000, we have increased

partnership participants from 10 to almost 40 industry organizations. Some of our partnership organizations include BITS, (formerly the Banking Industry Technology Secretariat), the Electronic Payments Association (NACHA), the Securities Industry Association (SIA), the American Council of Life Insurers (ACLI), the American Banking Association (ABA), the NASDAQ Stock Exchange, IBM and Swiss Re.

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Industry Outreach -Partnership meetings

First joint partnership meeting held on March 1, 2001.

Second meeting held November, 2001 Third meeting held July, 2002 Fourth meeting held April, 2003 Attendance typically includes

approximately 60 representatives from the business and legal community, trade associations and academia.

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Industry Outreach

Roundtable Forum A Roundtable forum was convened by the USPTO

in July, 2000. Industry Feedback We continually work with Industry to obtain

feedback on current prior art resources, and we actively solicit input on ways to expand resources to include other databases and information collections that we do not currently use in Class 705. We have addressed several industry organizations

and received feedback.

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NPL Commercial Databases

The examiners have access to over 900 Commercial Databases that maintain scientific and business related NPL.

The electronic information center (EIC) of Technology Center 3600 assists the examiners working in Class 705 in locating relevant NPL. The EIC provides examiners with: examiner library/search support professional searchers to perform non-patent

literature (NPL) searches

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What Can Industry Do?

Help us identify relevant prior art! Share databases, training

materials

Provide us with training Become familiar with the

business methods web page

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Thank You

Questions?U

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