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

Keeping the invention secret:

  The financial service industry has been dramatically changed by the availability of patents on computer-implemented methods of doing business – often thought of as software patents.  Most large financial institutions now have in-house patent counsel who manage prosecution, licensing, and potential litigation. Many of these institutions have aggressive patenting strategies and are hoping to amass large patent portfolios both to protect their own business and for licensing. 

  Financial institutions have a history of being quite secretive in their practices.  In one sense, this practice stops with the emergence of the patentability option.  In order to obtain a patent, an inventor must publicly disclose the details of the invention.  However, many institutions are opting to request that at least the patent application be left unpublished in order to maintain secrecy of the patent until the date the patent is issued (if ever).

  Formerly, patent applications were kept in confidence at the PTO until the resulting patent issued.  However, in 1999, in order to comply with the international TRIPS agreement, the PTO began a program of publishing (or “laying-open”) patent applications eighteen months after filing.  One clause of the ’99 law guarantees that the PTO will keep the application in secret if the patentee promises to not obtain foreign patent rights.  Foreign patent offices are quite sour on financial service-type business method patents.  Thus, the applicants do not give up much by agreeing to only obtain U.S.rights on their new methods of doing business.

By requesting nonpublication, financial institutions are generally able to maintain secrecy of the invention until the patent issues.  Further, if it appears that the patent will not issue or that the patent would disclose important trade secret information, then the institution may abandon the patent rather than risk public disclosure.

Links:

• USPTO’s  Business Method Webpage 
• USPTO’s Contact List for Business Methods

• How to Jump-Start Your Business Method Patent Cases: Part I 
• How to Jump-Start Your Business Method Patent Cases: Part II 
• How to Jump-Start Your Business Method Patent Cases: Part III 
• How to Jump-Start Your Business Method Patent Cases: Part IV