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PTO Mtg -- Patent Issues - Computer-Implemented Business Method(fwd)

Schnipp. schnapp:


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[Federal Register: June 22, 2000 (Volume 65, Number 121)]
[Notices]                              [Page 38811-38813]
Taken from the Federal Register Online via GPO Access 
[wais.access.gpo.gov]                 [DOCID:fr22jn00-44]

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

RIN 0651-AB20
 
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.

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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. 


Dated: June 16, 2000.

Q. Todd Dickinson,

Under Secretary of Commerce for Intellectual Property and Director 
of the United States Patent and Trademark Office.

[FR Doc. 00-15813 Filed 6-21-00; 8:45 am]
BILLING CODE 3510-16-P

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