Using Patent Re-examination to Eliminate Invalid Business-Method Patents

Computerworld - Imagine receiving a letter from a company offering to let you license a patent covering a computer-related business method for $50,000. Should you pay it? What if the company claims that its patent covers your Web site design or your software product and threatens a lawsuit for patent infringement if you refuse to pay?
Since 1998, when an influential appeals court ruled that business methods can be patented, the U.S. Patent and Trademark Office (PTO) has been overwhelmed with patent applications covering business processes, such as Amazon.com Inc.'s "one-click" shopping cart and Priceline.com Inc.'s auction-based pricing schemes. Scores of dot-com companies filed thousands of patent applications covering their business models, hoping to stake a claim to a piece of cyberspace. Even company executives with no technology background filed patents on methods of advertising, methods of selling cars and a method of teaching a janitor how to clean a building.
Unfortunately, some of the filings involved questionable advancements over existing technology. The PTO was initially ill-equipped to deal with patents involving "technology" that didn't involve hard science. IBM obtained a patent on a method of reserving a bathroom (U.S. Patent No. 6,329,919, titled "System and Method for Providing Reservations for Restroom Use"). A child obtained a patent on a method of swinging on a backyard swing (No. 6,368,227). A patent attorney even obtained a patent on a method of preparing a patent application (No. 6,049,811).
Other, more controversial business-method patents involve Internet and e-commerce technology, such as Amazon.com's one-click patent, Open Market Inc.'s patent involving electronic shopping carts, CyberGold Inc.'s patent for rewarding consumers who view online advertising, DoubleClick Inc.'s patent for collecting data about the surfing habits of online consumers and NetCentive's patent on awarding frequent-flier miles for online purchases. The online dating service eHarmony.com Inc. has recently trumpeted its new patent (No. 6,735,568) for matching single people, leading some to question how online dating can be patented.

Over the past few years, critics have decried the issuance of business-method patents, claiming that they will interfere with online commerce and that they exploit obvious variations of well-known techniques. The criticism has come not only from academics and pundits, but also from those in the affected technology areas, especially computer software and the Internet. Attempts by some companies to enforce vaguely written patents that were issued before the Internet became popular have also been criticized and have met with limited success. A patent that BT Group PLC claimed covered hyperlinking was narrowly interpreted by a judge to cover only pre-Internet technology.