(October 3, 2000) Rep. Berman and Rep. Boucher introduced a bill in the House that would make several changes to the business method patent process.
Rep. Howard Berman (D-CA) introduced HR 5364, the Business Methods Patent Improvement Act of 2000 on October 3. The sole cosponsor is Rep. Rick Boucher (D-VA). Both men sit on the House Judiciary Committee's Courts and Intellectual Property Subcommittee.
The bill would still permit patents to be issued for business method inventions; and the term would not be affected. However, such patents would be harder to obtain, and easier to challenge.
The highlights of the bill include the following:
Rep. Berman stated at a press conference on Tuesday morning, October 3, that he is not opposed to patents for business method inventions. "My primary concern in this issue is the protection of intellectual property, which I believe is critical both to innovation and to the economy -- and in that context, I want to make sure that the quality of U.S. patents is the highest possible."
"Since questions have been raised about whether this is the case," said Rep. Berman, "the responsibility of Congress is to take a close look at the functioning of the patent system in this very new, and rapidly growing area of patenting."
Rep. Rick Boucher (D-VA), who joined Rep. Berman at the press conference, stated: "Two years ago, the U.S. Court of Appeals for the Federal Circuit ruled in the State Street Bank decision that a patent could be issued on a method of doing business. Since then, the Patent and Trademark Office has been deluged with applications for business method patents. Unfortunately, the PTO has granted some highly questionable ones. Last year, it awarded a patent to Amazon.com for its "one-click" method of shopping at a web site. The press recently reported that the PTO is now on the verge of awarding a patent covering any computer-to-computer international commercial transaction."
Rep. Boucher concluded that "something is fundamentally wrong with a system that allows individuals to get patents for doing the seemingly obvious. And it has led to a lot of unnecessary litigation."
Both men stated that the bill will not be enacted in the current Congress. Rather, their intent is to start a debate on the topic, and continue the legislative process in the 107th Congress, which begins in January, 2001.
One of the fundamental changes that the bill would be the creation of a new, expeditious, and inexpensive opposition process. The bill would direct the PTO to establish an "Administrative Opposition Panel." Then, "Any person may file a request for an opposition to a patent on a business method invention on the basis of section 101, 102, 103, or 112 of this title", at any time within 9 months of the issuance of the patent.
An "administrative opposition judge" will then conduct a hearing, and within "18 months after the filing of a request for an opposition" that judge "shall determine the patentability of the subject matter of the patent". "Any party to the opposition may appeal" under Section 134, or "seek court review" under Section 141-145, any decision regarding patentability.
Another major change would be the lowering of the burden of proof in certain proceedings. The bill provides:
Yet another key feature regards creating a rebutable presumption of nonobviousness for certain applications for patents for a business method inventions. The bill would add language to Section 103 that provides if:
However, it also provides that "An applicant or patentee may rebut the
presumption ... upon a showing by a preponderance of the evidence that the
invention is not obvious ..."