nowEurope

In 1998, the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”), the federal court that hears all appeals in patent cases in the United States, decided the State Street Bank v. Signature Financial Group case.  That case held that a business method could be patentable if it produced a “useful, concrete and tangible result” (and if the other tests for patentability were met – novelty and non-obviousness).

The U.S. courts, the U.S. Patent and Trademark Office (USPTO), and the public interpreted this case broadly, with conventional wisdom developing that even pure business methods (not necessarily driven by a computer, for example) could be patented.  The floodgates were opened for patent protection for business method inventions (both automated, and in their pure form), causing a spike in the number of patent applications for such inventions (and resulting in many such patent applications issuing as patents by the USPTO in later years).

Meanwhile, the European Patent Office (EPO) (the regional patent-granting authority for member states of the European Patent Convention) continues to consider methods for doing business as unpatentable per se, unless the invention has a technical characteristic.  Thus, the USPTO and the EPO have been at odds over the years as to whether business methods can be patentable, with the USPTO generally taking a more expansive view (business methods are patentable), and the EPO generally taking a more restrictive view (business methods are not patentable).

This all changed with the In re Bilski case.

Continue reading ‘In re Bilski: Harmonizing U.S. and European Patent Law for Method Inventions?’

As a U.S. patent attorney, I work with companies of all sizes (including many start-up companies), in the U.S., Europe and elsewhere, helping them file for and obtain U.S. patents.  I also help these clients coordinate patent filings worldwide.  A question I’m often asked is: are patents worthwhile?  As with many types of investments and property rights, the answer is – it depends.

By way of brief background, patents can be considered a contract between an inventor (or the inventor’s employer) and the government.  Like most contracts, patents are a two-way street.  In exchange for a full disclosure of the invention by the inventor, the government agrees to grant exclusive rights to the inventor/company, but only if certain patentability tests are met.

Continue reading ‘Patents: Are They Worthwhile for a Start-up Company?’

There is no form of intellectual property more controversial, nor more often misunderstood, than so-called “business method patents”. While some individuals and companies complain that patent systems were never intended to protect “methods of doing business”, patent applications on these types of inventions continue to be filed in record numbers. Government patent offices continue to issue such patents, with support by judges who interpret the patent law. While the United States Patent and Trademark Office (USPTO) has perhaps become the most liberal in granting business method patents, Europe (such as by way of the European Patent Office) also allows these types of patents to be granted, if they are deemed to have a “technical effect”. Like most debates, there are plenty of arguments to be made pro and con.

Continue reading ‘Intellectual Property Rights for Financial Services’