Wednesday, February 17, 2010

Business Method Mondays Inagural Post

Today marks the beginning of what we hope will be an interesting series of posts from Michael Bowman and Sean Henderson. Mike and Sean have a very deep understanding of what is buried in USPTO's portfolio of granted and pending business method patents. They worked classifying and reclassifying patents to support maintenance of the US patent classification system and helping define the appropriate definitions for each of the classes and subclasses where business method patents are assigned. Few people have the depth of knowledge across the spectrum of business method patents as Sean and Mike. I hope you enjoy their insights.

This is Mike's first post.

Welcome to this new blog series. As we await the upcoming US Supreme Court decision on the Bilski case, and its implications for patenting business methods we are introducing “Business Methods Monday”. Sean Henderson, and I will be writing on various topics related to issues surrounding the patenting of business practices (Class 705 in the US Patent Classification system). I'd like to thank Arleen Zank, Coronado Group, Ltd., for this opportunity.

Sean and I recently completed reclassifying more than 11,000 patents and applications in class 705 under contract to the USPTO. We worked on many more documents in a number of computer technology and chemical apparatus classes. Our analysis of 11,000 patents and applications revealed common issues:

Poor, Unclear Writing -- This is where the patent quality problem begins. Poor, unclear writing leads to misclassification of the initial application, which will result in that application being routed to the wrong USPTO Technology Center Group Art Unit for examination. When this occurs, the patent case then must be transferred to the proper unit, leading to potential delays for inventors, increased workload for USPTO staff, and risk that the invention is not reviewed in light of appropriate prior art.

Inadequate Research of Prior Art by Inventors and Examiners -- Given the tremendous volume of information in US and international patent databases, along with that to be found in the general and technical literature, on the Internet, trade publications, and academic work, prior art searching is a difficult task. There are many instances of disclosed information that does not appear to be unique, based on what we had reviewed in a particular subclass array of a class tree schedule. Inadequate prior art searches represent a very significant risk factor for inventors, if it is subsequently determined that the invention, or specific aspects of it, infringes upon previously patented inventions.

Misclassification of Applications or Granted Patents -- Either the invention is not reviewed in light of the prior art that it actually lies within (leading to risk that it is not unique and can be successfully challenged), or it is rejected because it is improperly classified and the examiner(s) do not adequately understand the inventive content (leading to risk that unique inventions are rejected and thus do not come to market). We observed a large percentage of misclassification because classifiers/examiners do not observe PTO’s own rules of classification, read very simplistically for keywords in the abstract and first claim or claim array, or place an invention with a specific subclass of prior art because "that's where we want it", not because that is where the invention belongs. This means that the subclass is not a good representation of the art in a particular area or that researchers won’t have a comprehensive view of the patent landscape.

Taken together, inventors and assignees face very significant risks in terms of being awarded a properly reviewed and classified patent. A key lesson to draw from this is that applicants should do as much thorough research on prior art, and provide well-justified proposed primary and cross-reference classifications, before submitting their invention to the USPTO. With the wealth of tools available for literature searching and patent analysis, including Coronado Group’s Cognition IP, well-researched applications and patents should be the rule.

I will be writing future posts in several areas. We will look at the process of patenting business methods inventions, including some of the fine points of revisions to the class 705 class tree schedule and definitions. We'll look at business methods topics of interest, including specific applications or patents. I’ll share what I learned reviewing thousands of business methods patents and applications.

1 comment:

  1. And I would like to take the honor of the inaugural posting.

    I think you comments are spot on. As a patent agent who specializes in business methods, I've read too many business method patent applications where it did not appear as if counsel understood what he or she was writing.

    This, however, is a reflection of our current patent system as a whole, not the skills of any particular patent attorney.

    A person with solely a financial background, no matter how technical, cannot sit for the patent bar or be a patent examiner. Consequently neither the persons writing the applications nor the persons examining them have a formal background in the subject matter.

    The consequence is poorly drafted applications, very extended examination proceedings, and patents that garner little respect among genuine experts in the field of the invention.