BM patent

Business method patent (BM 특허/特許) refers to a class of patents which disclose and claim new methods of doing business.

This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

BM patents are exemplified by Priceline's reverse auction (US5,794,207), Overture's pay for placement (PCT/US2000/14753, US6,269,361B1) as seen as "Sponsor Link" on the search page, and so on.

Key words
business method, business model, patent, invention, In re Bilski

Business method/model
The essence of a business method or business model is that it defines the manner by which the business enterprise delivers value to customers, entices customers to pay for value, and converts those payments to profit.

Insofar as business model reflects management’s hypothesis about what customers want, how they want it, and how an enterprise can organize to best meet those needs, get paid for doing so, and make a profit, it may be registered as patent if it represents sophisticated creation of technological idea utilizing rules of nature, in particular, processed on-line consolidating software and hardware systems to get such idea to work.

Korean BM patent case

 * Supreme Court Decision 2001Hu3149 decided on May 16, 2003.

In this case, the plaintiff applied for a BM patent for its invention titled as "total management system for recycling household garbage", explaining that it employing computer-based bar code reading system and exploiting its resultant databases. It was rejected by the Korean Intellectual Property Office (KIPO). The issue was whether the invention used the rules of nature or not.

Article 2 Item 1 of the Korean Patent Act defines the term "invention" as the highly advanced creation of technical ideas utilizing rules of nature, and there is no ground for regarding the above Article 2 Item 1 of the Patent Act as a mere instructive provision. Thus, in case where a patent is applied for an invention not utilizing rules of nature, a patent is refused pursuant to Article 62 of the Patent Act on the ground that an invention does not satisfy the element of "inventions having intellectual applicability" as stipulated by Article 29(1) of the Patent Act.

The case holding that the patent applied invention cannot be viewed as "inventions having intellectual applicability" as stipulated by the main article 29(1) of the Patent Act on the grounds that the invention titled as "total management system for recycling household garbage" cannot be implemented by itself, considered as a whole, unless relevant regulations are provided; it does not utilize rules of nature as a mere man-made decision rendered by agreement, etc. among the pertinent authorities, garbage producers, and garbage collectors or as a follow-up judgment/man-made decision by the above pertinent authorities; each step is performed off-line, not on-line on the Web; also, it cannot be viewed as belonging to the category of a business model since the system linking softwares and hardwares is not yet specifically realized.

Bilski case
Bilski v. Kappos, 130 S. Ct. 3218, 561 US 177 L. Ed. 2d 792 (2010), was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under Article 101 of the U.S. Patent Act."

Issue
When the U.S. Supreme Court reviewed In re Bilski decided by the Federal Circuit, it was at hot issue whether the Justices would confirm the machine-or-transformation test as the sole test for determining the patent eligibility, or take other standard for a patentable process.

Holding
The Supreme Court affirmed the rejection of an application for a patent on a method of hedging losses in one segment of the energy industry by making investments in other segments of that industry, on the basis that the abstract investment strategy set forth in the application was simply not patentable subject matter. In other words, the rejection of the application was not made solely on account of the machine-or-transformation test.

Majority opinion
The Court affirmed the judgment of the Federal Circuit in In re Bilski, the case below. However, it rejected the machine-or-transformation test as a sole test of patentability based on an interpretation of the language of § 101 of the Patent Act. The Court rejected the Federal Circuit's statutory interpretation regarding the word "process," finding the definition in § 100(b) to be sufficient without turning to the canon of noscitur a sociis.

The Court looked to Gottschalk v. Benson and Parker v. Flook, and noted that both had explicitly refused to rely on the machine-or-transformation test as the sole test for patent eligibility.

The Court also rejected a categorical exclusion of business method patents from eligibility, reasoning that the definition of "process" in § 100(b) includes the word "method," which appears to comprehend some forms of business method patents. 35 U.S.C. § 273(b)(1) also provides as a defense to patent infringement prior use of a "method of conducting or doing business." By acknowledging the defense, the statute also acknowledged the possibility of business method patents.

Regarding Bilski's claimed subject matter, the Court found that his method of optimizing a fixed bill system for energy markets was an unpatentable abstract idea. Despite taking a broader reading of patent eligibility for processes, according to the majority opinion "this Court by no means desires to preclude the Federal Circuit’s development of other limiting criteria that further the Patent Act’s purposes and are not inconsistent with its text.

In the plurality sections of Kennedy's opinion, an overall Court minority opinion as not joined by Scalia, he notes that strict adherence to only "the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals" but "the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection." Kennedy also suggests that a categorical exclusion of some types of business methods from patent eligibility might be legitimate if that rule was based on the idea that purely abstract ideas are not patentable.

Concurrences
The holding of the Court was unanimous, but there were two concurring opinions, and no single opinion commanded a majority of the Court as to all parts.

Stevens' concurrence
Justice Stevens' concurrence, joined by Justices Breyer, Ginsburg, and Sotomayor, argues that the majority interpret the term "process" too broadly.[12] Stevens rejected the majority's reliance on the mention of the word "method" in 35 U.S.C. § 273(b), saying that the statute, originally known as the First Inventors Defense Act of 1999, was only passed by Congress in response to the confusion created by State Street Bank v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998). He would categorically exclude business methods from patentability, as they have not traditionally been patentable in the U.S., despite significant innovations in business methods.

Breyer's concurrence
Justice Breyer's concurrence began by agreeing with Justice Stevens "that a 'general method of engaging in business transactions' is not a patentable 'process'..." In a second part, joined by Justice Scalia, Breyer highlighted four points which he felt were consistent with both the opinion of the Court and Justice Stevens' concurring opinion:
 * that although the law's description of what is patentable in §101 "is broad, it is not without limit."
 * the Court has repeatedly stated that "transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines."
 * "while the machine-or-transformation test has always been a 'useful and important clue,' it has never been the 'sole test' for determining patentability."
 * "although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a 'useful, concrete, and tangible result,' [as held in State Street Bank v. Signature Financial Group] is patentable."

Part II sums up by stating "it is my view that, in reemphasizing that the 'machine-or-transformation' test is not necessarily the sole test of patentability, the Court intends neither to de-emphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach."

Implications of the Bilski case
Until the Supreme Court decision in In re Bilski was delivered, it was argued the judicial approval of USPTO's position on the machine-or-transformation test would stifle the software industy because a multitude of business method patents are not based upon such test. On the contrary, the open source group including Red Hat insisted that millions of softwares allowed by the federal courts since the mid-90s could not contribute to the U.S. industries.

The Court's opinion in this case, however, is seen as moderating the machine-or-transformation test requirement instated by the Federal Circuit in In re Bilski, while also leaving little guidance as to what should be considered patentable under § 101. "[T]he outcome from the decision might be best stated as 'business as usual.'"

In light of the decision in Bilski v. Kappos, the Supreme Court granted judicial review, vacated the decisions of the Federal Circuit, and remanded to the Federal Circuit for reconsideration the cases of Prometheus Laboratories, Inc. v. Mayo Collaborative Services and Classen Immunotherapies, Inc. v. Biogen Idec. The two claims related to medical diagnostics, and the claims in Prometheus were found patentable under the machine-or-transformation test while the claims in Classen were not. In December 2010, the Federal Circuit applied the broad eligibility of Bilski in Research Corp. Technologies v. Microsoft Corp., which upheld the patent eligibility of a process for digital image halftoning.

Patent Examiners and Practitioners were giving interim instructions on the interpretation of Biski v. Kappos both during the appeal process (on August 29, 2009) and shortly after the decision (on July 27, 2010) in documents issued by the USPTO.

A cutting-edge issue in regard to business-method patents is whether they are patent-ineligible because they are not "technological," regardless of whether they meet the other criteria of patent-eligibility and patentability. The majority opinion in In re Bilski refused to hold business methods categorically ineligible on any ground.