Business Method Monday -- Products, Social Networking, Cap & Trade and Wayfinding

This week, I'll discuss new business methods subclasses 705/317 through 325, which deal with inventions in the areas of business or product certification, social networking, human resources, destination assistance within a business, and personal security. You can view this section of the schedule in Classification Order 1892. These schedule changes have not yet migrated to the online Manual of Classification on USPTO's web page. This portion of the schedule is shown here:

317 . Business or product certification or verification

318 .. Product, service, or business identity fraud

319 . Social networking

320 . Human resources

321 .. Employment or hiring

322 .. Benefits package

323 . Destination assistance within a business structure or complex

324 .. Building evacuation

325 . Personal security, identity, or safety

Business or product certification or verification. This new subclass, "705/317, covers inventions ". . . for documentation, data collection, processing or monitoring to ensure the veracity or factuality of the status of an entity's qualifications, either required or claimed by that entity in execution of a business requirement or legal process." A clarifying note brings in a very broad range of content:

* land use by an entity

* carbon credits, emissions, abatement

* product compliance

* clinical trials

* trade agreements

* licensing

* degree verification

* government test

* regulatory compliance

* continuing education requirements

* safety compliance

* documentation of legal proceedings, such as courtroom transcripts.

Other notes (termed "See or Search" notes) under this definition direct inventions ". . . including analysis of business processes or operations research" to subclass 705/7, or to subclass 705/311 ". . . for the management of the work performed by a lawyer for a client." Sean discussed this latter subclass last week.

Indented below 705/317 is 705/318, for Product, service, or business identity fraud. This subclass is ". . . for the analysis or detection of (1) illegitimate use of a product or service, misrepresentation of the authenticity of products or services, (2) approved sources of products or services, or (3) the coding or marking of product with data used for authentication." The use of the word "analysis" in this definition appears to conflict with the search note in the parent subclass which directs claimed disclosures of business process analysis to 705/7. Additional notes direct claimed disclosures for subsets of fraud prevention or detection elsewhere in the class 705 schedule.

Social networking has now been broken out as subclass 705/319. Claimed disclosures that manage ". . . interaction between individuals or entities who are connected by one or more common relations or interests" are to be classified here.

Human resources (705/320) is defined as ". . . keeping of records (e.g., benefits, etc.) of the departments or employees of an organization, or hiring of employees", with employee performance review or evaluation directed to 705/7 in a see or search note.

Indented below human resources are two subclasses. The first is 705/321 for Employment or hiring, which requires ". . . engaging the services of a person or persons for wages or other payment either directly or through a third party." The second is 705/322 for Benefits package, defined as the ". . . maintenance, regulation, or the monitoring of non-monetary employment compensation provided to employees by an organization (e.g., health insurance, leave, retirement, etc.)." Detailed aspects of health (or other) insurance, such as co-pay determination, is directed to 705/2 (Health care management (e.g., record management, ICDA billing)), while managing retirement fund portfolios is directed to 705/36 (Portfolio selection,

planning or analysis).

Destination assistance within a business structure or complex, subclass 705/323, requires ". . . a computerized arrangement for providing direction information at a business location or the creation of direction plan for a business location." Indented under this subclass is 705/324, Building evacuation, ". . . for the removal of people from a structure for protective purposes." A note incorporates subject matter which creates a removal plan for a location.

Personal security, identity, or safety is new subclass 705/325, the last area we'll cover this week. Claimed disclosures ". . . (1) ensuring the legal or uninterrupted enjoyment by a person of their life, their body, their health, or their reputation (e.g., TSA airport screening, public venue admission screening, etc., in order to bar an individual who may cause harm to another, etc.), (2) for the detection of illicit use of personal information, such as analysis or detection means for determining that a person or business entity is who they say they are, or (3) for protective measures or protocol to prevent injury" are captured here. Notes direct certain fraud detection methods elsewhere in the class 705 schedule.

Next week, Sean will discuss new class 705 subclasses covering business processes related to to education, fundraising, and shipping processes.

Why Patents Matter To Everyone –Breast Cancer Edition

Two weekends ago when the Nor’easter hammered New York City, my husband and I were in New York for some family business. We wandered through the rain to meet some friends and have lunch and catch up. These are friends we’ve known since college with whom we can really talk about life and where it’s taken you. The real stories. Not the “everything is great” version of adulthood.

My friend is a breast cancer survivor. As breast cancer goes, she had a rough time. Tough surgeries and more of them than most women. A tough time with the chemo. Plus all the other stuff that goes along with being a breast cancer survivor – gaining weight, losing her hair, being tired, having chemo memory, the emotionally crushing personal and family emotional issues. She worked the whole time she was in treatment. She’s much tougher than me.

During the conversation we talked about pink ribbons, whether she was sick of seeing them and how the experience affected her family. Families who experience breast cancer have their own perspective on the healthcare system and breast cancer that the casual outside observer doesn’t have. She told me she was worried about her daughter. She mentioned that she had been tested for a particular gene mutation that is present in women with certain types of cancer. She is an Ashkenazi Jew. Ashkenazi Jews of Eastern Europe heritage are more likely to have gene mutations in the BRCA1 and BRCA2 genes. There is a link between these mutations and breast cancer and ovarian cancer.

My friend was talking about how she had been tested and things turned out well for her. She was shocked about how expensive the test was. Her insurance paid for the test but now she and her husband needed to decide if they should have their daughter tested. He is Sephardic, a Jew of Meditaranean descent. That improves the odds that their daughter might not have the mutation. The test cost over $3,000.

We talked about the test and the cost. As an aside she said, “I don’t understand why this test costs so much?”

“Patents.” It’s all about the patents. I explained that Myraid Genetics sells the test for the presence of the genes that indicate a predisposition for breast cancer. The patents are on DNA sequences from the gene. Myriad and the Univeristy of Utah owned seven patents on its BRCAnalysis test. They had a corner on the market. Not only do they perform the test but there would be no second opinion because no one else could do the test without violating Myriad’s patents. She asked a simple question, “How can you patent something in the human body?

This led to the whole discussion on discovery versus invention; and fairness, and science. Anyway, it was pretty serious stuff for a Saturday brunch so we moved on.

Yesterday the court answered the question when Judge Robert Sweet wrote in his opinion that the Myriad patents covered part of the natural world and therefore did not qualify for patent protection. The isolated DNA that Myriad discovered was a product of nature. According to the ACLU over 20% of the human genome has been patented.

It remains to be seen how all this will end up. Myriad’s stock went down 5.5% today, another indication that the loss of patent protection can be market moving. But one of the things that we know for sure is that everyone needs to understand the role that patents and innovation play in their lives and how these inventions impact us. The Judge’s opinion is a good read on the topic. (PDF).

By the way, a major decision that impacts a huge chunk of the genome domain, personalized medicine, woman with breast cancer, and moves the stock price of Myriad 5.5% in a single day and none of the major commentators included the patent numbers in their reporting or commentary so here they are:

5,747,282

5,837,492

5,693,473

5,709,999

5,753,441

5,710,001

6,033,857

Class 705 Schedule Changes, Classification Order 1892 - Installment 1

Mike Bowman has provided an introduction to the recent changes to Class 705 under Classification Order 1892, which added subclasses 705/300 through 348 and that were inserted by the USPTO between Subclass 705/45 and 705/400, with the exception of Digital Rights Management, 705/901-912, which is for cross-reference discretionary classification listings only and will be discussed in a future installment. For this particular project, Mike and I reclassified some 4,000 documents according to subject matter, which were originally classified as 705/1.

This is the first of a five (5) part series to describe the changes and some of the inventive content that may appear in this subclass array. This installment covers subclasses 300 through 316.

We have included the subclass section 300 through 316 that is under discussion below for reference. For the complete Schedule and Definition listing for 300 through 348, use this link to get to the Classification Order.

300 . Collaborative creation of a product or a service

301 . Workflow collaboration or project management

302 . Product or service warranty

303 . Product recall

304 . Customer service (i.e., after purchase)

305 . Product repair or maintenance administration

306 . Product appraisal

307 . Rental (i.e., leasing)

308 . Product recycling or disposal administration

309 . Alternate dispute resolution

310 . Intellectual property management

311 . Legal service

312 .. Estate planning

313 . Real estate

314 .. Property management

315 .. Land development

316 .. Closing

As a reminder, anything classified in Class 705 must involve apparatus or method applied to data processing operations for some type of business processes. Starting with 300 and 301, the subject matter covers collaborative operations such as methodology that involves product or service concept development that occurs between various parties or for that matter, various businesses. In the case of 301, it is project related collaborative activities, that not 705/8 resource related or 705/9 staff related task in a project.

The subclasses 302 through 306, and 308 can be considered services for clients that primarily occur after the sale of the product or the service that is being rendered, such as processes for administering a warranty, including product safety or defects recall. In 305, this is subject matter related to methodology for administering repairs of anything considered a product, in 306 any appraisal process for determining the remaining value of anything that is a commodity, which can be applied to the insurance, banking and real estate industry, just to name a few possible applications. Subclass 308, product recycling or disposal administration, is going to become huge, and will include methodology for processing waste, waste stream management, waste sorting and recycling. For example, battery reclamation and electronic component reclamation processes may be classified here.

Back tracking in the revised Schedule to 307, the Definition for 307 “Rental (i.e., leasing)” states this is “Subject matter drawn to a computerized arrangement for the creation or maintenance of a record keeping system for recording the allocation of the temporary use of commodities”.

There is a problem here. The USPTO “Handbook of Classification” specifies that a Claim is classified in the first occurring subclass that accepts the claimed subject matter at least in part or in whole. Record keeping of resource allocation, regardless of the resource being leased, is an administrative function for a resource that is being allocated. If properly classified, this subject matter will always stop first in 705/8, “Allocating resources or scheduling for an administrative function”, which based on the subject matter, means that 307 will at best only be a Discretionary classification listing.

310 relates to intellectual property rights management of copyrightable works, patented inventions, trademarks, trade secrets, etc…such as methodology involving licensing, royalties or other means for protecting intellectual property, which could include litigation methodology applied to property rights.

The coverage of 311 is very broad: “…computerized arrangement for work performed by a lawyer for a client”. There is one indent to 311, Subclass 312 for estate planning, for subject matter limited to legal arrangements that will be executed post-life subject matter, which claim dependent, may stop in higher in 705/30, 705/36R or 36T.

The 313 through 316 Subclass array cover real estate development, construction of buildings, buying and selling of land including natural resources, with additions breakouts for services applied to managing commercial, industrial or residential real estate property in 314, methods for increasing property value in 315, and methods applied to transfer of property ownership from one party to another in 316. A good deal of this collective subject matter must be read carefully for content that stops higher in the Schedule in 705/8, 705/30 and 705/35.

Mike Bowman with provide Part 2 of this 5 part series, which will cover a breakdown of 705/317-325, inventions in the areas of business or product certification, social networking, human resources, destination assistance within a business complex, and personal security.

My next installment, Part 3, will cover 705/326-328,329,330-341, covering new breakouts related to business process involving education, fundraising, and shipping processes.

Business Method Monday --General Business Methods Schedule Changes -- Introduction

Additional large changes in the USPTO's Business Methods schedule will soon appear. In early February 2010, USPTO released Classification Order 1892, which expands subclass 705/1, AUTOMATED ELECTRICAL FINANCIAL OR BUSINESS PRACTICE OR MANAGEMENT ARRANGEMENT to 49 new subclasses from 705/300--348, and 12 new subclasses in a cross-reference art collection from 705/901--912. This post begins a series in which Sean and I will describe these changes and the new inventive content they explicitly cover.

General business methods inventions that were not otherwise classifiable in Class 705 either above 705/1 in the schedule (art dealing with business processing using cryptography, or with electronic negotiation), or below it in numerous other subclasses, have been classified here. USPTO undertook a reclassification project over the past couple of years to analyze the patents and pre-grant publications (i.e., patent applications) that had accumulated in subclass 705/1 and break them out into new subclasses. This new structure has not yet migrated to the USPTO's Manual of Classification, but it soon will.

Our upcoming series will address the following topics:

• Part 1: New subclasses covering work collaboration, products and services, intellectual property and legal services, and real estate
• Part 2: Inventions in the areas of business or product certification, social networking, human resources, destination assistance within a business, and personal security
• Part 3: New breakouts on education, fundraising, and shipping
• Part 4: Business documentation, employee and customer communications, business ratings, and business modeling
• Part 5: Digital rights management

Reclassification projects, and the new structure they form in the patent landscape, represent opportunities for inventors to help define the body of art in newly created subclasses. Holders of patent portfolios also might want to re-evaluate their holdings in light of schedule and definition changes, and art assigned by USPTO to each new subclass, to determine whether the potential exists for legal exposure, either positive or negative.

If you have questions or specific areas you'd like to see us cover, leave us a comment. We'll do our best to include your comments in our posts.

We look forward to sharing our thoughts in this series,

Mike.

Business Methods Monday is the work of Michael L. Bowman and Sean Henderson

Academic Inventor's Bill of Rights

The Association of University Technology Managers (AUTM) kicked off it's annual meeting with the release of the Academic Inventor's Bill of Rights.

The Inventors’ Bill of Rights proposes, among other things:

• Students and faculty have a right to freedom of expression; the right to teach and publish their research shall not be abridged by intellectual property policy.
• Inventors shall be entitled to timely disposition of their inventions and to obtain access to inventions for which the University elects to discontinue commercialization effort, without onerous restrictions or obligations to the university that would act as disincentives to commercialize.
• Universities must establish and publish transparent practices and procedures comprising their commercialization processes.
• Inventors have the right to due process, conducted in public with public access to all records as they may request.
• All inventors, including students and other subordinate persons, shall have equal right to institutional protection of their interests in their intellectual property regardless of academic rank or position.
• Inventors have the right to be informed about any license negotiations or re-negotiations.
• Any changes to intellectual property or commercialization policies shall be approved by the appropriate faculty-run governance body, such as a Faculty Senate.
• Disputes shall be resolved by a committee that includes faculty, student and administrative representatives.
• No university may require present assignment of future IP rights as a condition of employment or student enrollment.

Or, at a minimum:

• Inventors who assign their IP to a university may elect a qualified independent agent to promote their invention into public use. The agent must represent the interests of the university, public and inventors. Election of an agent does not modify the pre-existing royalty sharing arrangements.

Read the press release at:

Inventors’ Bill of Rights Unveiled at AUTM Conference – Cleveland Clinic Director of Commercialization Teams with IP Advocate Founder to Codify Inventors’ Role in Licensing IP | WebSphere Journal

So You Think You Have a Patent...

In our installments of “Business Method Monday”, Mike and I outlined issues we have seen that patent applicants should consider as they create their applications, work with their patent agents and attorneys, and help insure that their patent is valid particularly where there is capital development in process, or where an inventor is protecting a revenue stream from a product or services, a license agreement, or royalties for the use of the patented technology.

A quick review…each claim must be classified based on the subject matter it discloses. Each claim is assigned to a specific Class and Subclass in the US Patent Classification system based on where that subject matter resides. A single claim may have additional subject matter claimed that is outside of the primary classification subclass array and is lower in the Class Schedule. It should have cross-reference listings of any Subclasses that applies. The same Claim may disclose detail that is outside of the Primary Class altogether, which should have additional cross-reference listings of all Classes and Subclasses where that subject matter resides. Please note that according to the USPTO classification guidelines, a Primary classification must come from “Claimed” subject matter and the same rule applies to what are know as Mandatory classifications. Discretionary classifications can optionally be assigned for subject matter that is disclosed in the Abstract, the Claims or that is disclosed in the description detail that follows the Claims, that the Examiner thinks may be important for future search activity.

Once the determination of where the Claimed subject matter resides is complete, the Examiner doing a diligent prior art search must search each of those Class/Subclass areas for art that invalidates any part of, or all of the Claimed subject matter.

Areas the Examiner searched during the examination are listed after the “Field of Search” heading on your Patent. This list includes Class/Subclasses searched, and may also include references to the documents searched.

We are going to look at two example Patents. The first is 6,108,637, issued on August 22, 2000, as a Primary in 705/7 and crosses to 705/30; 707/10; 714/E11.189; 715/207; 715/234. The Field of Search listed is 705/1, 7, 8, 9, 30; 706/11; 707/10, 200, 202, 512, 204, 526 395/200.54, 200.53, 200.59, 712,182.04, 675, 200.79, 200.47. There is no business method claimed, nor any 705/7 business operational analysis claimed. In this particular case, it appears that the 705 classification was based on the Abstract or the Disclosed detail, rather than the Claims detail and at best the 705/7 classification should be a Discretionary classification only. What is actually claimed is monitoring the position of a content display on a display screen, evaluating the position of the content and determining the total duration of time that the content display is hidden by the one or more images. That is not the limit of what is claimed, but the subject matter belongs in various Subclasses in Class 715 and in some cases in Class 709, which based on the Field of Search history, appears not to have been searched by the Examiner. In addition, Class 345 should absolutely have been searched.

The next Patent is 7,313,532, issued as a Primary in 705/7 on December 25, 2007, with a Field of Search listing only 705/7. What is actually claimed is 705/8 and 705/10 subject matter, resource allocation from an inventory system and market analysis of sales data, specifically, determining the most profitable distribution policy for a single period inventory system, based on historical sales data for an item to forecasting the mean demand for said item, which is applied in various claims, to initiates the allocation procedure from the optimal draw, and in other claims, determining optimal stock level draw for the most profitable distribution policy for a sales target. Again, it appears that no search was conducted by the Examiner in 705/8 and 705/10 where the claimed subject matter actually resides.

I did some brief searches using the Coronado Cognition IP search engine and pretty quickly found prior art that would demand close reading as is remarkably similar to these patents. In the case of 7,313,532, two patents that came up were 5,884,300, issued on March 16, 1999 and 7,039,479, issued on May 2, 2006 that are of interest. Time was limited, so I did not continue the search, nor did I look at published Applications, but based on subject matter I seem to remember seeing there, I suspect there are others published documents that could be of concern.

In coming installments I'll address some "patent prevention issues" -- techniques that can lead to a novel invention never seeing the light of day as a patent:

• Intentionally extremely vague or someone appears to want the claims to be very broad.
• Applications where it appears that someone other than the applicant was writing the claims and did not really understand what the invention was.

Until then, Sean

Advertising Image v. Multimedia Object REDUX

Last July, Arleen wrote a post Advertising Image v. Multimedia Object about ad images v. multimedia images in movies. Would the classifications applied by USPTO to the two patent applications she cited change in light of the recent changes to the advertising section of the class 705 schedule?

The first of these applications is 10/112,519 -- Method and System for Providing Intelligent Advertisement Placement in a Motion Picture. As described in the Abstract, the invention provides for "intelligently embedding advertisements into motion picture content . . . [by] receiving personalized data and the identity of a motion picture from a user over a computer network; selecting an advertisement image having attributes that approximately match the personalized data; editing the motion picture to include the selected advertisement image; and transmitting the edited motion picture to the user over the computer network for viewing." Note that the three primary and cross-reference classifications applied by USPTO to this application all lie within class 725, Interactive Video Distribution Systems.

Claim 1 states: "A method for providing intelligent advertisement placement in a motion picture, comprising: retrieving personalized data associated with a viewer; comparing the personalized data with a plurality of attributes, each attribute associated with an advertisement image, to determine an attribute that is most consistent with the personalized data; retrieving an advertisement image associated with the attribute that is most consistent with the personalized data; and imposing the retrieved advertisement image on a sequence of image frames of a motion picture."

The first three aspects of this claim ("retrieving personalized data . . .; comparing . . . data with . . . attributes . . .; retrieving an advertisement image . . .") are captured by 705/14.66, Based on user profile or attribute. This subclass, indented under 705/14.49 Targeted advertisement, requires subject matter in which "a set of data or a characteristic of an individual is used to increase interest in a promotion." One might be tempted to proceed to the next indented subclass, 705/14.67 Personalized advertisement, however, the claimed subject matter does not meet the defined requirement for "at least one personal characteristic . . . of an individual [being] added to a promotion." The final aspect of claim 1 ("imposing the retrieved advertisement on a sequence of image frames . . .") is classified as 725/34, Specific to individual user or household.

Claim 1 should be classified as 705/14.66, using the USPTO's classification rule that subject matter is classified at the highest, most indented subclass which captures it. A cross-reference classification to 725/34 would also be appropriate.

Claims 2-11, which depend on claim 1, add more detail but they do not change the two classifications just noted. Of interest is claim 6 which includes ". . . generating attributes based on demographic information selected from a group including age, gender, income, occupation, recreational interest, and geographic information." We referred above to 705/14.67, which includes specific personal characteristics such as age or address. We might be tempted to apply that classification to claim 6, but, again, the definition requires the characteristic being "added to a promotion", for example "Greetings on your 32nd Birthday, Dave, we have a gift for you . . .". This step is not claimed, and we therefore can't apply that classification here.

The remaining claim arrays in this application (claims 12-18, 19-27, 28-32, 33, and 34) provide additional detail, and allowed USPTO to add the other class 725 cross-references (725/35, 725/42), but they do not change the targeted advertising classificaton of 705/14.66.

The second application Arleen discussed last July is 11/486,683 -- System for Creating Dynamically Personalized Media. From the abstract we can immediately see that advertising ("product placements", "enables advertisers to precisely control product placement on a customized basis") in multi-media programs is the subject of the application. However, in reviewing the claims, which are the basis for classification, it is not until we reach the third claim set (independent claim 15 and its dependent claims 16-21) that it is clear that ad placement is being claimed. Arleen alluded to the somewhat unclear writing and vocabulary used in this application. (Editorial aside -- it is to inventors' and application writers' advantage to write clearly using terms appropriate and readily understandable to one skilled in the art they are discussing. This will help ensure correct classification, greater accuracy of examination in the context of the art actually being claimed, and a quicker, and therefore less costly, examination process.)

Take a look at this application in the USPTO's Patent Application Full Text and Image Database. The classifications provided for the U.S. Current Class field are 705/14.61 (the primary classification is in bold) and 705/14.67. This indicates that the application was re-classified following its original publication (primary classification at that time was 705/14).

Claims 15-20 would be classified in 705/14.49, Targeted advertisement. Claim 21 adds detail, ". . . the time in the master program where a product appears . . . and how long a product is enabled" which requires classification in indented subclass 705/14.61, Based upon schedule. This subclass requires "the specific time or day that a promotion is going to be available or exposed to the public." Because this subclass is the most indented, highest in the subclass array, it becomes the primary classification.

The other classification listed on this application is 705/14.67, Personalized advertisement, which requires "at least one personal characteristic (e.g., name, birthday, age, phone number, or address, etc.,) of an individual [be] added to a promotion." Where does this classification arise from? According to the rules of classification, it cannot be a mandatory classification, as it is lower in the same subclass array than the primary (705/14.61). It must therefore be a cross-reference classification, but what claim language leads to it? A very careful reading of the claims leads to the conclusion that there is no claim language supporting this classification. However, look at the "Brief Summary of the Invention" section, paragraph 0014, on the USPTO Full Text Database page. The first sentence states "In addition, by collecting data on recipient viewing habits and analyzing that data in light of other recipient account information (from other databases), the multi-media object management system is able to intelligently select and display products or services to a recipient who is truly interested in purchasing these displayed products or services." This would meet the definition for a personalized ad, and it seems likely that this is a possible source for this classification.

There are several take-away lessons here. First, and to re-emphasize, clear writing and accurate, art-appropriate terminology, is to the applicants' distinct advantage. Over the short-term, this can help provide a quicker, more accurate, and less costly examination process. Over the long-term, assuming a patent is granted, clear accurately written patents can help ensure protection against infringement or licensing lawsuits by increasing the likelihood that they are examined against the correct art. Second, although Google Patents is a useful search tool, the classifications it shows are not updated to reflect class schedule and definiton changes, and subsequent reclassification of patents and applications by USPTO in resposne to those changes. Inventors and assignees should avail themselves of a wide range of tools to increase the accuracy of their research.

Until next time, Mike