IPO Statement on Business Method Patents

(Approved Unanimously by the Board of Directors on June 28, 2000 and reaffirmed February 6, 2001)

For the patent system to operate effectively, the legal principles under which patents are examined must be clear and capable of application with a reasonable degree of certainty.  Similarly, the courts must be able to determine whether a patent has been properly granted using clear and unambiguous legal precedent.  These concepts of clarity and certainty apply to all areas of technology sought to be patented, including business method patents.

IPO recognizes that the Supreme Court has so far denied review of cases relating to business method inventions.  Should the Supreme Court choose to hear such a case, IPO will review the issues on appeal and consider whether the filing of an amicus brief is appropriate.

IPO does not believe that Congress should legislate in the area of business method patents at the present time.  Additionally, IPO is not aware of any legislative proposals today that merit serious consideration or debate.  Any legislation that might develop in this area must be consistent with Article 27 of the TRIPs agreement, prohibiting, inter alia, discrimination based on the field of technology and imposition of requirements for patentability beyond novelty, non-obviousness (inventive step), and utility (industrial applicability).

The standards for patentability for emerging technologies are identical to those of established technologies -- that is, subject matter in the public domain, or anything merely obviously different, can never be the subject of a valid patent.  The integrity of the patent system depends upon the ability of the U.S. Patent and Trademark Office to carefully and completely examine applications for patent to assure rigorous compliance with the patentability requirements, especially the requirements for novelty and non-obviousness.  The burden on the Office of examining patent applications in emerging fields of the technology, or in technology areas in which explosive growth is occurring, is particularly acute.

To respond to the difficulties of rigorously examining patent applications in emerging and/or expanding technology areas, the U.S. Patent and Trademark Office has historically taken exceptional efforts.  The Office has recently published an "Action Plan for Business Method Patents" that provides reasonable and appropriate steps to assure that proper examination of so-called "business method" patent applications can be undertaken.  IPO strongly supports the Director's initiatives and encourages the Congress to assure that the Office has sufficient funding to undertake these efforts without sacrificing its standards for examining applications in other technology sectors. IPO believes the PTO should develop a program for obtaining prior art documents relating to business method patents and for cataloging and making available for searching  prior art documents that are submitted and placed in the file of an individual application.

Finally, IPO urges exploration of other constructive proposals that would address issues related to the patenting of business methods, particularly as they relate to the ability of the PTO to examine and issue valid patents, so long as these proposals are not in conflict with U.S. law or U.S. treaty obligations.