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.