How to Jump-Start your Business Method Cases: Part II

We are discussing the unusually long pendency of financial services business method patent applications (Class 705).  There are many cases where applications have been on file at the PTO for 4+ years without receiving any substantive response from the Office. 

A little more digging found the PTO’s statistics on issuances from class 705:

Class 705 1995 1996 1997 1998 1999 2000 2001 2002 2003
Applications Filed 330 584 927 1340 2821 7800 8700 6782 6000
Patents Issued 126 144 206 420 585 899 433 493 495

This table is a bit misleading because of the problem of long pendency.  For example, very few, if any, of the almost five hundred patents that issued in 2002 were among the 6,782 that were filed that year. However, the table does illustrate the point that very few financial services patents are making it through to issuance.

John Love is director of TC 1600, the center that handles class 705 patent applications.  A couple of years ago, John, along with Wynn Coggins, produced a white-paper outlining their view on "Successfully Preparing and Prosecuting a Business Method Patent Application."  The paper is a nice read and has some useful tips for avoiding unnecessary delays in prosecution.  Some highlights:

  1. If you are concerned about a lengthy pendency (we are), consider filing a Petition to Make Special under 37 CFR 1.102. (more on this later)
  2. Include a clear description of the invention.
  3. Identify any practical application of the invention.
  4. Do a search and discuss the best known prior art that is related to the invention.
  5. Ask a colleague to review the claims without reading the specification.
  6. Use "Jepson-type" claim construction. I.e., "the improvement comprising . . . "
  7. Do not hesitate to call the Technology Center Director if your questions or problems are not being resolved.

Be careful with some of John’s suggestions.  Jepson-type claims and full discussion of the prior art both come with potential risks.  A mischaractarization of the prior art, for instance, may run the risk of invalidating the patent.  However, other suggestions are great! Of course, write clearly and fully describe the invention. 

For today, I would add three more practices that help to reduce pendency:

Do not be the cause of delay: Often, delay at the patent office is due to something that the applicant failed to do.  In reviewing file histories, there were many cases where the applicant did not pay the filing fee, did not file a proper declaration, or did not promptly respond to a request from the Office. 

In class 705, you will not receive an office action on the merits when you have outstanding problems or missing parts.  Once you get those parts in, your application will likely return to the tail end of the queue.  Make it your practice to file complete applications when you file business method patent applications.

Provisional Applications May be A Waste of Time: Your application doesn’t even get to the end of the line until you file a utility application. 

Business Method Patents are Easy to Write but Hard to Prosecute: The technology is usually easy to understand but it is often difficult to get around prior art references.  And, it takes time and diligence to pursue these claims.  Bottom line — prosecution of these types of applications will be more expensive than the preparation. Have a loose enough budget to allow your attorneys to call the patent office to chat up the examiner or TC director.