FC: Has the U.S. Patent Office really reformed?

[Declan McCullagh <declan () well com>]

http://www.cluebot.com/article.pl?sid=01/03/21/1817201                                      
   Has the U.S. Patent Office Really Reformed?
   posted by vergil on Wednesday March 21, @12:50PM
   from the extraordinary-claim-needs-extraordinary-proof dept.

   According to a brief article in today's Wall Street Journal
   entitled "Fewer Patents on Methods Get Clearance," the
   U.S. PTO "has drastically reduced the pace of issuing controversial
   business-method patents, by setting up bureaucratic roadblocks that
   have angered some information-technology investors." Is this claim
   significant? Has the U.S. government truly reformed its habit of
   granting patents to business methods? I think the answer's "No" for
   two reasons.

   What exactly is a "Business Method Patent?"
   
   Most tech-savvy folks -- particularly journalists -- use the phrase
   "business method patent" as a blanket perjorative applying to patents
   on Internet processes, software and methods of doing business. The
   terms "business method patent," "software patent" and "web patent" are
   used interchangably in the vernacular to refer to the recent flood of
   perceived broad and obvious patents having something to do with the
   Internet.
   
   However, when a representative of the U.S. PTO says "business method
   patent", he's referring to a specific classification of patents -
   Class 705 "Data processing: Financial, Business Practice, Management,
   or Cost/Price Determination." The drastic reduction in business method
   patents mentioned in the WSJ article almost certainly refers to Class
   705 issuances exclusively.
   
   The two most frequently mentioned examples of allegedly obvious
   business method patents (Priceline's name-your-price patent and
   Amazon's one-click patent) are members of Class 705. Yet most of the
   Internet-related patents lambasted daily in the press and discussion
   forums like Slashdot are not Class 705 -- British Telecom's "Hyperlink
   Patent" falls under Class 711, Microsoft's patent on style sheets is
   designated Class 707, and Apple's "Multiple Theme Engine" patent is
   Class 345.
   
   The U.S. PTO has made some progress in applying greater scrutiny to
   the torrent of business method patents. A new, comprehensive website
   has been set up, and a "Business Methods Patent Initiative" launched.
   Unfortunately, these measures -- including second review and expanded
   mandatory searches -- are limited to Class 705 patent applications.
   I've seen little evidence that the U.S. PTO's newly implemented
   "bureaucratic roadblocks" have weeded out potentially broad, non-novel
   and obvious patent applications that fall under classifications other
   than 705. One such example may be Microsoft's recently granted (Jan.
   16, 2001) patent 6,175,833 that seems to claim the venerable concept
   of running automatic web-polls.
   
   Exporting American "Innovation" Abroad
   
   While the U.S. PTO struggles to reform its examining procedures, and
   members of Congress propose potential solutions (such as the Business
   Method Patent Improvements Act of 2000), at least one other branch of
   the U.S. government -- the Office of the U.S. Trade Representative --
   appears to have been laboring to ensure that other nations adopt the
   controversial American practice of granting patents to business
   methods. (USTR is the federal agency charged with negotiating and
   enforcing America's trade positions with other nations.)
   
   For instance, consider the following excerpt from a October 24, 2000
   Memorandum of Understanding "on Issues Related to the Protection of
   Intellectual Property Rights Under the Agreement Between the United
   States and Jordan on the Establishment of a Free Trade Area":
   
   "5. Jordan shall take all steps necessary to clarify that the
   exclusion from patent protection of 'mathematical methods' in Article
   4(B) of Jordan's Patent Law does not include such 'methods' as
   business methods or computer-related inventions." 
   
   U.S. government representatives took a similar negotiating position in
   a March 2, 2001 "expert level" meeting between "United States and
   Japanese government officials." According to a fact sheet on the USTR
   website:
   
   "The United States urged the Japanese Government to take a number of
   measures in this area, including ... clarifying its laws to ensure
   that the personal use exception for copying is not abused in the
   digital environment; and protecting business method patents." 



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