by John J. Love The United States Patent and Trademark Office

1. Business Method Patents The USPTO PerspectivePrepared for the Casualty Actuary Society Annual Meeting November 15, 2004. by John J. Love The United States Patent and Trademark Office U S P T O

2. The Patent Examination Process Once a patent application is filed, it is initially classified in USPCSand assigned based on the claims in the application. The Patent Office is separated into basically three engineering areas which are: • chemical • electrical • mechanical U S P T O

3. The Patent Examination Process The “first office action” reflects the examiner’s position on patentability re the application and the claims. • It is a written position which usually includes: • rejections of claims • citations of prior art • possible indications of allowable subject matter • Most applications are initially rejected. U S P T O

4. The Patent Examination Process Compact Prosecution Principles The “second office action” is typically in the form of: • allowance or • final rejection U S P T O

5. The Patent Examination Process Appeal Process An applicant may appeal a second rejection to the Board of Patent Appeals and Interferences. See 35 USC 134. • A Notice of Appeal followed by an Appeal Brief is required • The examiner will then prepare an Examiner’s Answer and the application is forwarded to the Board for decision. U S P T O

6. The Patent Examination Process Reexamination Proceedings Questions concerning the patentability of an issued patent based on prior art patents or printed publications may be addressed through the reexamination process. There are two types: • ex-parte reexamination • inter-partes reexamination U S P T O

7. First Examination First Examination Amendment Notice of Allowance Second Examination Second Examination Appeal Brief Appeal Process Appeal Process The Examination Process Rejection Allowance U S P T O

8. Patent Searches bythe Public Can be performed: • At the USPTO • At Patent and Trademark Depository Libraries (PTDL’s) throughout the United States; more than 80 located in all 50 states, DC and Puerto Rico. List of PTDLs by state provided on USPTO web site • Online - www.uspto.gov U S P T O

9. Public On-Line Searching • Text and image searching at the USPTO and 31 PTDL’s. • Commercial Data Bases (DIALOG, STN, ORBIT, etc.) • INTERNET (multitude of new files) • USPTO web site [http://www.uspto.gov] U S P T O

10. Examiner Searching in Business Methods • Mandatory Searching in issued patents and U.S. application publications(according to our classification schedule) • WEST (text) - electronic search of patents • NPL - electronic search of non-patent literature • Search Strategy Advisory Panel • Consists of senior examiners and search experts. A resource examiners can consult to get assistance on searches U S P T O

11. AU 3621 - Business Cryptography AU 3622 - Incentive Programs/Coupons AU 3623 - Operations Research, Voting, Transportation AU 3624 - Finance & Banking (even number applications) AU 3625 - E-shopping AU 3626 - Health Care/Insurance AU 3627 - Point of sale/Inventory/Accounting AU 3628 - Finance & Banking (odd numbered applications) AU 3629 – Business Processing, Cost/Price, Reservations Class 705 Art Units U S P T O

12. Fujitsu LTD:59 patents NCR: 58 patents (cash registers/e-commerce) Hitachi: 46 patents (cash registers/e-commerce) Walker Digital: 46 patents Citibank N.A. 30 patents (e-commerce) Microsoft: 30 patents (e-commerce) AT&T: 28 patents (e-commerce) Matsushita Electric: 24 patents (e-commerce) Top Assignees by Patent Grants 1999-2003 • IBM: 145 patents (cash registers/e-commerce) • Pitney-Bowes: 90 patents (postage/utility metering) U S P T O

13. Filing Trends in 705

14. Examiner Growth Year FY ‘99 FY ’00 FY ‘01 FY ’02 FY ’03 #Examiners 17 33 77 125 110 #Patents 585 899 433 492 495 Issued Allowance * 55% 45% 26% 16% Rate * Data not available U S P T O

15. Distribution of Business Applications (FY 2002 data) U S P T O

16. Second Pair of Eyes • All applications issued in class 705 go through a 2nd level of review • Ensures search requirements are met • Reasons for Allowance in every case • Scope of the Claims is appropriate U S P T O

17. Industry Outreach Customer Partnership Since September, 2000, we have increased partnership participants from 10 to almost 40 industry organizations. Some of our partnership organizations include BITS, (formerly the Banking Industry Technology Secretariat), the Electronic Payments Association (NACHA), the Securities Industry Association (SIA), the American Council of Life Insurers (ACLI), the American Banking Association (ABA), the NASDAQ Stock Exchange, IBM and Swiss Re. U S P T O

18. Industry Outreach -Partnership meetings • First joint partnership meeting held on March 1, 2001. • Second meeting held November, 2001 • Third meeting held July, 2002 • Fourth meeting held April, 2003 • Attendance typically includes approximately 60 representatives from the business and legal community, trade associations and academia. U S P T O

19. Industry Outreach • Roundtable Forum A Roundtable forum was convened by the USPTO in July, 2000. • Industry Feedback We continually work with Industry to obtain feedback on current prior art resources, and we actively solicit input on ways to expand resources to include other databases and information collections that we do not currently use in Class 705. • We have addressed several industry organizations and received feedback. U S P T O

20. NPL Commercial Databases • The examiners have access to over 900 Commercial Databases that maintain scientific and business related NPL. • The electronic information center (EIC) of Technology Center 3600 assists the examiners working in Class 705 in locating relevant NPL. The EIC provides examiners with: • examiner library/search support • professional searchers to perform non-patent literature (NPL) searches U S P T O

21. What Can Industry Do? • Help us identify relevant prior art! • Share databases, training materials • Provide us with training • Become familiar with the business methods web page U S P T O

22. Thank You Questions? U S P T O