IP: Has the U.S. Patent Office really reformed?

[David Farber <dave@farber.net>]

>Date: Wed, 21 Mar 2001 15:14:49 -0500
>From: Declan McCullagh <declan@well.com
>
>
>http://www.cluebot.com/article.pl?sid=01/03/21/1817201 
>
>    Has the U.S. Patent Office Really Reformed?
>    posted by vergil on Wednesday March 21, @12:50PM
>    from the extraordinary-claim-needs-extraordinary-proof dept.
>
>    According to a brief article in today's Wall Street Journal
>    entitled "Fewer Patents on Methods Get Clearance," the
>    U.S. PTO "has drastically reduced the pace of issuing controversial
>    business-method patents, by setting up bureaucratic roadblocks that
>    have angered some information-technology investors." Is this claim
>    significant? Has the U.S. government truly reformed its habit of
>    granting patents to business methods? I think the answer's "No" for
>    two reasons.
>
>    What exactly is a "Business Method Patent?"
>
>    Most tech-savvy folks -- particularly journalists -- use the phrase
>    "business method patent" as a blanket perjorative applying to patents
>    on Internet processes, software and methods of doing business. The
>    terms "business method patent," "software patent" and "web patent" are
>    used interchangably in the vernacular to refer to the recent flood of
>    perceived broad and obvious patents having something to do with the
>    Internet.
>
>    However, when a representative of the U.S. PTO says "business method
>    patent", he's referring to a specific classification of patents -
>    Class 705 "Data processing: Financial, Business Practice, Management,
>    or Cost/Price Determination." The drastic reduction in business method
>    patents mentioned in the WSJ article almost certainly refers to Class
>    705 issuances exclusively.
>
>    The two most frequently mentioned examples of allegedly obvious
>    business method patents (Priceline's name-your-price patent and
>    Amazon's one-click patent) are members of Class 705. Yet most of the
>    Internet-related patents lambasted daily in the press and discussion
>    forums like Slashdot are not Class 705 -- British Telecom's "Hyperlink
>    Patent" falls under Class 711, Microsoft's patent on style sheets is
>    designated Class 707, and Apple's "Multiple Theme Engine" patent is
>    Class 345.
>
>    The U.S. PTO has made some progress in applying greater scrutiny to
>    the torrent of business method patents. A new, comprehensive website
>    has been set up, and a "Business Methods Patent Initiative" launched.
>    Unfortunately, these measures -- including second review and expanded
>    mandatory searches -- are limited to Class 705 patent applications.
>    I've seen little evidence that the U.S. PTO's newly implemented
>    "bureaucratic roadblocks" have weeded out potentially broad, non-novel
>    and obvious patent applications that fall under classifications other
>    than 705. One such example may be Microsoft's recently granted (Jan.
>    16, 2001) patent 6,175,833 that seems to claim the venerable concept
>    of running automatic web-polls.
>
>    Exporting American "Innovation" Abroad
>
>    While the U.S. PTO struggles to reform its examining procedures, and
>    members of Congress propose potential solutions (such as the Business
>    Method Patent Improvements Act of 2000), at least one other branch of
>    the U.S. government -- the Office of the U.S. Trade Representative --
>    appears to have been laboring to ensure that other nations adopt the
>    controversial American practice of granting patents to business
>    methods. (USTR is the federal agency charged with negotiating and
>    enforcing America's trade positions with other nations.)
>
>    For instance, consider the following excerpt from a October 24, 2000
>    Memorandum of Understanding "on Issues Related to the Protection of
>    Intellectual Property Rights Under the Agreement Between the United
>    States and Jordan on the Establishment of a Free Trade Area":
>
>    "5. Jordan shall take all steps necessary to clarify that the
>    exclusion from patent protection of 'mathematical methods' in Article
>    4(B) of Jordan's Patent Law does not include such 'methods' as
>    business methods or computer-related inventions."
>
>    U.S. government representatives took a similar negotiating position in
>    a March 2, 2001 "expert level" meeting between "United States and
>    Japanese government officials." According to a fact sheet on the USTR
>    website:
>
>    "The United States urged the Japanese Government to take a number of
>    measures in this area, including ... clarifying its laws to ensure
>    that the personal use exception for copying is not abused in the
>    digital environment; and protecting business method patents."
>
>
>
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