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Comments on Claimable Aspects of SoftwareImplemented Business Methods by Professor Andrew Chin
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Title: Comments on Claimable Aspects of SoftwareImplemented Business Methods by Professor Andrew Chin
1
Comments on Claimable Aspects of
Software-Implemented Business Methods by
Professor Andrew Chin
- Margo A. Bagley
- Associate Professor of Law
- Emory University School of Law
- Atlanta, Georgia
2
Key Insights from Claimable Aspects
- Identifying differences between formal and
informal claims treated the same by pending
legislation - Anomalous higher patentability standard for
formal claims - Potential for obtaining true monopoly, more
valuable patents via informal or essential use
(EU) claims - Potential Issues
- Enhanced Patent Value
3
Business Method or Business Idea?
- EU claim can encompass an entire software product
market - Not limited to any particular implementation
method - Method is at such a high level of abstraction,
appears to be a claim to an idea
4
Business Method or Business Idea?
- The laws of nature, physical phenomena, and
abstract ideas have been held not patentable. . .
. Thus, a new mineral discovered in the earth or
a new plant found in the wild is not patentable
subject matter. Likewise, Einstein could not
patent his celebrated law that Emc2 nor could
Newton have patented the law of gravity. Such
discoveries are manifestations of . . . nature,
free to all men and reserved exclusively to
none. Diamond v. Chakrabarty (USSC 1980)
5
Business Method or Business Idea?
- The emphasis on the commercial function of the
program . . . together with the complete
generality of the hardware and software elements
. . . leads to the conclusion that this is a
patent on the business idea of using computers,
in particular the Internet, to price and purchase
options on airline tickets. Prof. R. Merges
(discussing Priceline.coms airline ticket
auction patent)
6
Business Method or Business Idea?
- Some abstract ideas are now patentable
- Consistent with ever-expanding scope of
patent-eligible subject matter
7
Prosecution Issues with EU Claims
- Enablement, written description
- Prior Art
8
Sample 1-Click EU Claim
- A method of allowing a user to purchase an item,
comprising - Displaying the item to a purchaser
- Allowing the purchaser to identify himself or
herself - Allowing the purchaser to order the item
- Receiving a request from the purchaser to
identify himself or herself and to order the
item, wherein only one purchaser action is
required to cause the request to be received - Retrieving previously stored information
regarding the purchaser - Generating a purchase order and
- Fulfilling the purchaser order.
9
Sample 1-Click EU Claim
- More likely to be obvious in view of analogous
real world transactions, for example, - frequent hotel guest
- regular customer in informal store
10
Enhancing Patent Value?
- EUs allow functional claiming without the limits
of 35 U.S.C. 112, p6 - Not limited to means disclosed in the
specification - Broader claims (easier to infringe)
11
Enhancing Patent Value?
- EU claims more likely to be infringed
- Claims are functional, cover plethora of
implementation forms - Not limited to disclosure in specification
- Easier to establish literal infringement
- Need not resort to Doctrine of Equivalents
12
Enhancing Patent Value?
- Non-Structural Barriers to Entry
- sticky features may give an advantage to first
entrant - Customer resistance to learning new interface
- Customer reluctance to re-enter personal data on
a new site
13
Conclusion
- EU claims can enhance patent value and create a
true monopoly if issues of enablement, prior art
can be overcome. EU claims have additional
benefits in infringement analysis and may enable
creation of non-structural barriers to entry.
However, EU claims seem more likely to stifle
innovation.
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