DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
RIN 0651-AB20
Notice of Roundtable on Computer-Implemented
Business Method Patent Issues
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of roundtable on computer-implemented business method
patent issues.
SUMMARY: As part of the recently announced business method patent
initiative, the United States Patent and Trademark Office (USPTO) is
holding a roundtable, the purpose of which is to discuss the history
behind computer-implemented business method patents and to identify ways
to improve the USPTO's current examination approach to
computer-implemented business method patent applications. Members of the
public are invited to attend the roundtable, or to participate as a
panelist in the roundtable discussion, on the topics outlined in the
supplementary information section of this notice, or other related
topics. Individuals who are not selected, or do not wish to apply for
selection as panelists may request to attend the discussion as an
audience member. The roundtable is an opportunity for an informal
discussion. Panelists will be asked to provide their individual input;
group consensus advice will not be sought.
DATES: The roundtable will be held on Thursday, July 27, 2000, from 9
a.m. to 4:30 p.m. Self-nominations to participate as a panelist and
requests for attendance at the roundtable must be received by no later
than July 7, 2000.
ADDRESSES:
Location of the Roundtable
The roundtable will be held at the Crystal City Sheraton Hotel, 1800
Jefferson Davis Highway, Arlington, VA 22202.
Mailing Address for Self-Nominations and Requests for Attendance
Self-nominations to participate as a panelist and requests for
attendance at the roundtable should be addressed to Director of the
United States Patent and Trademark Office, Box 4, United States Patent
and Trademark Office, Washington, DC 20231, marked to the attention
of Elizabeth Shaw. Self-nominations may also be submitted by
facsimile to (703) 305-7575, or by electronic mail through the
Internet to elizabeth.shaw2@uspto.gov.
FOR FURTHER INFORMATION CONTACT: Jennifer Lucas by telephone at (703)
305-9300, by facsimile at (703) 305-8885, by electronic mail at
jennifer.lucas@uspto.gov, or by mail addressed to Director of the United
States Patent and Trademark Office, Box Comments-Patents, Commissioner
for Patents, Washington, DC 20231.
SUPPLEMENTARY INFORMATION:
Background
The number of patent applications related to computer-implemented
business methods in Class 705 grew from 1,300 to 2,600 between FY 1998
and FY 1999. Much of this growth may be attributed to the decision in
State Street Bank & Trust Co. v. Signature Financial Group Inc., 149
F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), that held that
computer-implemented business methods are eligible for patent protection
under 35 U.S.C. 101.
Electronic commerce is an extremely significant component of today's
technology-driven economy. While less than one percent of the 290,000
applications filed with the USPTO last year related to
computer-implemented business methods in Class 705, computer-implemented
business method patents play an important role in this growing industry.
In an effort to enhance the quality of the examination of business
method patent applications, the USPTO is interested in working together
with the software, Internet, and electronic commerce industry to
identify ways to improve current business operations and solve business
methods-related issues, including access to software-related prior art.
On March 29, 2000, the USPTO announced the business method patent
initiative, which includes industry outreach and quality programs. The
industry outreach programs are intended to encompass the establishment
of a customer partnership with industry, the convening of a roundtable
forum, and an effort to obtain industry feedback on prior art issues.
The quality programs encompass steps to enhance the technical
training of examiners, revise the examination guidelines and examples,
and expand current prior art search activities. This includes a review
of mandatory search areas, the establishment of a new second-level
review of all allowed applications in Class 705, and an expansion of the
sampling size for quality review along with the introduction of a new
in-process review of Office actions to focus on field of search and
patentability issues involving novelty and nonobviousness.
As part of this initiative, the USPTO invites members of the public
to attend the roundtable or to participate as a panelist in the
roundtable discussion. Panelists will be asked to provide their
individual input. Attendees will be invited to ask questions and provide
comments. The intent of this roundtable is to offer an informal forum
for a free and open discussion of issues relating to the topics outlined
in the supplemental section of this notice. Group consensus advice will
be avoided in the roundtable.
Participation as a Panelist in the Roundtable Discussion
The roundtable will be an open forum providing a fair and open
opportunity for panelists to discuss major issues related to patent
protection for computer-implemented business methods and for the public
at large to observe and listen to the discussion, ask questions and
provide comments. Panelists will be discussing the topics outlined in
the supplemental section of this notice, or other related topics. During
the roundtable discussion, the issues addressed by the panelists will be
facilitated by a moderator. The USPTO will select panelists from
self-nominations based on qualifications that will offer a broad range
of expertise and perspectives on the topics listed in the supplemental
section. In addition to selection of panelists from the
self-nominations, the USPTO may also solicit participation from various
members of the patent community and academia. The USPTO would like the
panel to include a cross-section of various stakeholders, such as
start-up and established e-commerce companies, corporations, attorneys,
database managers and creators, academia representatives, and trade
associations representatives.
Those interested in participating in the roundtable discussion as a
panelist should send their self-nominations to the attention of
Elizabeth Shaw, addressed to Director of the United States Patent and
Trademark Office, Box 4, United States Patent and Trademark Office,
Washington, DC 20231. Self-nominations must include the participant's
name, affiliation, title, mailing address, telephone number, and a short
resume reflecting the participant's knowledge of and/or interest in the
USPTO business method patent initiative. Facsimile number and Internet
mail address, if available, should also be provided. Individuals will be
notified of accepted self-nominations by the USPTO approximately one
week prior to the date of the roundtable. Non-accepted nominees will
also be notified by the USPTO. No one will be permitted to participate
as a panelist in the roundtable discussion without prior approval.
Individuals who would like to attend the roundtable discussion as an
audience member in the event that they are not selected to participate
as a panelist, must include a statement with their self-nomination
explicitly requesting attendance. If such a statement is included with
the self-nomination, a separate request for attendance is not required.
As discussed below, these requests will be honored on a first-come,
first-served basis.
Audience Attendance at the Roundtable Discussion
Attendees will be provided with audience-style seating to watch and
listen to the panel discussions. Attendees will be given the opportunity
to submit questions and comments during the question and answer periods.
Those interested in attending should send their requests for
attendance, to the attention of Elizabeth Shaw, addressed to Director of
the United States Patent and Trademark Office, Box 4, Washington, DC
20231; facsimile (703) 305-7575; or e-mail elizabethshaw2@uspto.gov.
Requests for attendance must include the attendee's name, affiliation,
title, mailing address, and telephone number. Facsimile number and
Internet mail address, if available, should also be provided. Roundtable
attendees will be accepted as requests are received. Requests for
attendance will be honored on a first-come, first-served basis according
to the time and date of receipt of each request. Because of space
considerations, approximately 150 members of the public will be accepted
as attendees. In order to ensure a broad cross-section of attendees, the
USPTO reserves the right to limit the number of attendees from any
single organization or law firm. Therefore, organizations and law firms
must designate their official representatives. Individuals will be
notified of accepted requests for attendance by the USPTO approximately
one week prior to the date of the roundtable. Non-accepted requesters
will also be notified by the USPTO. No one will be permitted to attend
without prior approval.
Topics for the Roundtable Discussion
The roundtable will begin with an overview and history of
computer-implemented business method patents and the State Street Bank
decision, as well as what is happening today on this issue. This portion
will be followed by roundtable discussions on the examination and
economic issues surrounding business method patents. The topics to be
discussed by the roundtable participants will include:
A. How computer-implemented business method applications are examined.
--Eligibility for patenting
--Novelty and nonobviousness requirements, including automation of known
processes
B. The impact of patent protection for computer-implemented business
methods on the innovation, evolution and development of electronic
commerce.
--Are computer-implemented business method patents encouraging or
curbing growth in innovation?
--Are there empirical studies or evidence that support either conclusion?
C. Creation of a business methods prior art database for searching
computer-implemented business method patent applications.
--Unique characteristics of business methods prior art
--Types of prior art in the new database and the accessibility of the
prior art
--Challenges in creating the business methods prior art database
D. Discussion of the USPTO's Business Method Patent Initiative
announced on March 29, 2000.
--Does the initiative adequately address concerns raised about the
examination of computer-implemented business method patent applications?
--Are there other issues related to computer-implemented business
methods on which the USPTO should be focusing?
Classification Section
It has been determined that this notice is significant for purposes of
Executive Order 12866. This notice involves information collection
requirements related to the filing and processing of a patent
application and which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.). These information collections have been reviewed and
previously approved by the Office of Management and Budget under the
following control numbers: 0651-0031 and 0651-0032. The United States
Patent and Trademark Office is not resubmitting information collection
packages to OMB for its review and approval because the changes under
consideration do not affect the information collection requirements
associated with the information collections under these OMB control
numbers. Notwithstanding any other provision of law, no person is
required to respond nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB Control Number.
June 16, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office