Business Methods Patent Initiative: An Action Plan

INDUSTRY OUTREACH

1. Customer Partnership : Establish formal Customer Partnership with the software, Internet and electronic commerce industry similar to that in place with the biotechnology industry. The Partnership will meet quarterly to discuss mutual concerns, share USPTO plans and operational efforts in this technology area, and discuss solutions to common problems.

2. Roundtable Forum : The USPTO will convene a Roundtable Forum with Stakeholders in Summer 2000 to discuss issues and possible solutions surrounding business method patents.

3. Industry Feedback : A greater effort will be made to obtain industry feedback on prior art resources used by the USPTO, solicit input on other databases and information collections and sources, and expand prior art collections.

QUALITY

1. Enhance Technical Training :

   • Enhance technical currency for examiners and continue current training efforts/partnerships with industry associations and various individual corporate sponsors.

   • Business practice specialists will be pursued to serve as a resource for examiners on alleged common or well known industry practices, terminology scope and meaning, and industry standards in four basic areas: banking/finance, general e-commerce, insurance, and Internet infrastructure.

   • The USPTO will publish the areas of training needs for comment and offers to provide such training.

2. Revise Examination Guidelines : The Examination Guidelines for Computer-Related Inventions and the relevant training examples will be revised in light of the State Street Bank and AT&T v. Excel decisions.

3. Expand Current Search Activities :

   • Mandatory Search : A mandatory search for all applications in Class 705 to include a classified U.S. patent document search, and a text search of U.S. patent documents, foreign patent documents, and non-patent literature (NPL), with NPL searches to include required search areas mapped/correlated to U.S. classification system for Class 705, which will provide a more fully developed prior art record;

   • Second Review : A new second-level review of all allowed applications in Class 705 will be required, with an eye toward ensuring compliance with search requirements, reasons for allowance, and a determination whether the scope of the claims should be reconsidered; and

   • Expand Sampling Size : The sampling size for quality review by the Office of Patent Quality Review will be substantially expanded, and a new in-process review of Office actions will be introduced with an emphasis on the field of search of the prior art and patentability determinations under 102/103.