[Federal Register Volume 65, Number 121 (Thursday, June 22, 2000)]
[Notices]
[Pages 38811-38813]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 00-15813]


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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

[[Page 38812]]

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

[[Page 38813]]

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]
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