Claiming Business Method Patents: Taking Advantage of Long Pendency

I have often wondered the role of business method patents. Today, I was able to attend a very interesting talk by John Doll, the Commissioner for Patents. One thing that the Commissioner pointed out was that there is a 111 month backlog for business method patents. That is almost 10 years worth of backlog. Is this a problem or an opportunity?

With a clever claiming strategy, there are ways to deal with business methods that can serve a client well.

One method of dealing with a “business method” is to claim the “business method” as a device. The best way is to claim a device that is critical for the function of the business method, as opposed to the business method itself. For example, rather than claiming a method of making lemonade, making a sign, and selling lemonade on a street corner, claims might be drawn to a stand, located on a street corner, with a sign advertising lemonade. In this example, we claim a device without which the business method could not function. We would skip the long pending times of business method claims and get a patent on the device, a patent which would give the applicant about an equal strength business weapon as a pure business method patent, but in a much shorter time frame.

In some cases, a patent may be much more useful at the end of the term, rather than the beginning. Because the projected 10 year pending time of a business method patent, the patent owner would be granted Patent Term Extension on the order of 7-10 years. This makes a business method patent last far longer into the future than a device patent. Some technologies are more valuable farther into the future and thus such a patent is desirable.

Having this in mind, a prudent patent practitioner will claim an invention in two distinct ways: one as a device and one as a business method. The claims will attempt to be patentably distinct so that the PTO issues a restriction, and the applicant will hopefully be able to get the relatively early issued device patent as well as a very late issuing business method patent. This may well extend the patent coverage of an invention for several more years than a mere device patent.