Business Methods Searching Best Practices
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Business methods searches can be broadly defined as any search which involves new methods of doing business. This includes new methods of doing business in the areas of e-commerce, insurance, banking, tax compliance, etc.
While simple in definition, the area of Business Methods is perhaps the most controversial. Business Methods have only been considered patentable subject matter in the United States since 1998, when the Court of Appeals for the Federal Circuit reached a decision in State Street Bank v. Signature Financial Group, Inc. Despite this decision, and an increase in the number of filed Business Methods patent applications, there have been a number of controversial patents that have been subject to public scrutiny.
The United States Patent and Trademark Office, contains several articles to help one understand the patenting of Business Methods and related issues.
Obstacles Facing the Searcher
One of the main obstacles facing the business methods searcher is that not all business methods technologies are classified together. For example, in the United States Patent Classification System (USPC), not all business methods patents can reliably be found in Class 705. Methods of teaching are classified in Class 434 - Education and Demonstration. Methods of playing games are classified in Class 273 - Amusement Devices and Games. Methods of improving crop yields are classified in Class 47 - Plant Husbandry. These are only a few examples. This is true for international classifications as well. Therefore, it is important to keep in mind that in addition to the primary Business Methods class, it is always necessary to identify other classes in which a technology may be classified.
The other difficulty that Business Methods searchers often encounter is that Business Methods are still not patentable in some countries, and may have only recently become patentable in others. This means that the amount of prior art that is available may be limited compared to other, more established, areas of technology. Further complicating matters is the reality that national and international classification systems in Business Methods may not be as fully developed or as detailed as in other arts.
Searching Patent Documents
Patent searching in the art of Business Methods is centered on a lot of exhaustive reading. The reason for this is that it is difficult to display a business method visually aside from a schematic representation such as a flowchart. Business Methods is not an art that can be represented easily and clearly by drawings, like inventions in the field of Mechanical Engineering can, for example. Therefore, the searcher will almost always have to dive into the text of patents to gauge their relevance.
Because of this, a search tool that possesses strong text searching features and is able to combine keywords with a plurality of Boolean, proximity, and truncation operators is important to extract patents of interest. A variety of commercial search tools possess these features and would be suitable for Business Methods searching. In particular, tools with strong advanced highlighting features, such as PatBase and PatAnalyst (among others), are especially suited to dealing with large volumes of patent text.
Searching Non-Patent Literature
SpringerLink, an interactive database of journals, books, and reference works produced by Academic Publishing Company is often cited by Business Methods searchers as a valuable resource. The Business Source Premier database, available at many libraries, covers thousands of peer-reviewed and non-peer reviewed publications and is also a mainstay for many searchers in this field.
LexisNexis, Factiva.com, and ABI/INFORM (accessible through ProQuest, Dialog, and many universities) contain thousands of news and business information sources including information related to products and systems.
NTIS (US National Technical Information Service), Compendex, Ei Backfile, Inspec, SoftBase, Dissertation Abstracts, and the Gale Groups databases can be accessed from a number of sources such as Engineering Village, Questel (Qweb and QPAT), and Dialog. These contain business information that is often helpful when patent searching in the area of Business Methods.
Specific Search Strategies
These search strategies are examples of specific best practices that can be applied during the course of a search in the area of Business Methods. These are steps to be taken in addition to accepted search practices that apply to all searches. For a more general progression of search steps, please see the General Searching article.
- Almost all business method searches have relevant subclasses within US Class 705 as this class is specifically for the classification of business methods. Therefore, start the search by identifying any subclasses within 705. This can be done with a quick look at the subclass definitions at the USPTO classification website.
- Once the appropriate subclasses are identified, the searcher should perform an exhaustive search on the most relevant subclasses of class 705. If the subclass has thousands of hits, the searcher should use very broad limiting keywords to bring the result set down to a manageable number. This will enable the searcher to quickly review art relevant to the search and, in addition, develop a better understanding of other terminology that can be used for more comprehensive full text searching.
- While almost all Business Methods searches will have pertinent subclasses within class 705, due to the nature of business methods, they will also have relevant classes and subclasses from classes other than 705. For example, almost all e-commerce related technologies have database and/or networking components. Therefore, searching classes 707 and 709 respectively is necessary to uncover relevant patents that may not have been classified in 705.
- A thorough non-patent literature search is a necessity in any Business Methods search. Business methods that may be patented are commonly used within a commercial product or system. Because of this, relevant press releases or articles in newspapers, journals, or magazines can often be discovered. There are several online databases that store searchable collections of thousands of newspapers, journals, and magazines, such as Factiva and ProQuest (see the previous section, "Searching Non-Patent Literature").
Key Classification Areas
The following US, IPC, and Japanese classes are central to searching in Business Methods. A phone conversation with a USPTO Examiner is usually helpful for identifying some initial US classes and subclasses. As technologies are becoming increasingly multidisciplinary, this is not an exhaustive list and other classes may apply.
|705||Data Processing: Financial, Business Practice, Management, or Cost/Price Determination|
|707||Data Processing: Database and File Management or Data Structures|
|709||Electrical Computers and Digital Processing Systems: Multicomputer Data Transferring|
|902||Electronic Funds Transfer|
|G06Q||Data Processing Systems or Methods, Specially Adapted For Administrative, Commercial, Financial, Managerial, Supervisory Or Forecasting Purposes; Systems or Methods Specially Adapted For Administrative, Commercial, Financial, Managerial, Supervisory or Forecasting Purposes, Not Otherwise Provided For|
|G06F||Electric Digital Data Processing|
|G07G||Registering the Receipt of Cash, Valuables, or Tokens|
|5B055||Banking and Disbursement Calculation|
|5B049||Computers for Specific Applications|
|3C100||General Factory Administration|
For further reading, searchers should reference the corresponding best practices article covering computer and information sciences. Due to some overlap in the fields, the best practices and sources disclosed in that article may also be applicable to Business Methods searches.
To learn more about the history of Business Methods patents, read Lois Matelan’s publication, The Continuing Controversy Over Business Methods Patents. In addition, the article, Views on Business Method Patents Differ Throughout the World, produced by law firm Nixon Peabody, concerning the views of the international community on Business Methods patents, is also a worthy read.
- ↑ Matelan, Lois. The Continuing Controversy Over Business Method Patents Fordham University website, http://law.fordham.edu/publications/articles/200flspub9391.pdf. Accessed on March 25, 2009.
- ↑ Brackett, Jr., Tim L. and Pilaud, Robert L. Views on Business Method Patents Differ Throughout the World Nixon Peabody website, http://www.nixonpeabody.com/publications_detail3.asp?ID=89. Accessed on March 25, 2009.
- Coggins, Wynn W. When is an Electronic Document a Printed Publication for Prior Art Purposes? USPTO website, http://www.uspto.gov/web/menu/pbmethod/aiplafall02paper.htm. Accessed on March 25, 2009.