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Comments on Claimable Aspects of SoftwareImplemented Business Methods by Professor Andrew Chin

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... this is a patent on the business idea of using computers, in particular the ... Business Method or Business Idea? Some abstract ideas are now patentable ... – PowerPoint PPT presentation

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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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