Business Method Patents Cumulative Supplement

In a landmark decision, the Federal Circuit Court of Appeals in Signature Financial v. State Street Bank held that business methods may be patented. Recently, the US Supreme Court in Bilski v. Kappos left the door open for the availability of patents for business methods. These holdings, together with the explosive growth of electronic commerce and technology, make the business method patent an important growth area of intellectual property. Now in a revised Looseleaf format, this completely updated Second Edition of Business Method Patents is your guide to the unique opportunities and risks in this emerging area of intellectual property law. Business Method Patents, Second Edition is your authoritative source for expert guidance on: The landmark Supreme Court decision in Bilski v. Kappos USPTO view on business method patents, including an overview of BPAI rulings Mechanics of the patent application Prior art searches Drafting claims for business method or model and e-commerce inventions Drafting the complete specification Drawings required for business method patents Building a strategic patent portfolio Litigating business method patents International protection for business methods

Business Method and Software Patents addresses the drafting of business-method and software patents in the wake of the U.S. Supreme Court decision in Bilski v. Kappos. Morgan Rosenberg and Richard Apley offer a review and analysis of all relevant case law and guidelines presented by the United States Patent and Trademark Office (USPTO). With the use of actual patents filed by the authors, this work provides practical information and guidance on the drafting of successful patent applications.

Although business methods previously had been patented, the Court of Appeals for the Federal Circuit first gave them formal recognition as patentable subject matter in 1998. Internet business method patents have been roundly criticized by most observers as being singularly inferior to most other patents. Many have even argued that business methods should not be patentable subject matter. As a result, Congress and the Patent and Trademark Office (PTO) singled them out for special treatment. All of these criticisms were voiced without empirical support. We gathered data on most Internet business method patents issued through the end of 1999 and compared them with a large contemporaneous data set of patents in general. We also compared them with patents in fourteen individual technology areas within the general patent data set. Our comparison focused on several metrics that we believe serve as good proxies for patent quality and value. We found that Internet business method patents appear to have been no worse than the average patent, and possibly even better than most. They also appear to have been no worse, and possibly even better than patents in most individual technology areas. These findings lead us to question the conventional wisdom that these patents were uniquely deficient. We briefly explore some possible explanations for the chasm between the accepted view and what we believe to have been the reality, including the possibility that negative opinions about these patents may have been characterized by an information cascade. More important, we believe that efforts to single out these patents for special treatment not only lacked sound justification in the particular case but also reveal more fundamental problems associated with ex ante definitions to carve out any particular technology area for different treatment.

Nearly a decade after the Federal Circuit decision in State Street, patents on computer-implemented methods of doing business have become commonplace. To date, there is little evidence of any effect on the rate of innovation or R&D among firms in financial services. Indeed, measuring such effects presents difficult problems for researchers. We do know that some of these patents are successfully licensed and others are the subject of ongoing litigation. Looking ahead, a number of recent Supreme Court decisions are likely to have a significant effect on how business method patents are enforced. Congress is also considering significant reforms to U.S. patent law