UNITED STATES: When is an Electronic Document a Printed Publication for Prior Art Purposes?

I. EXECUTIVE SUMMARY

Recent growth in business technologies, particularly in areas related to electronic commerce, has been substantial. Computers and the Internet have created an information age that is revolutionizing society, and although the economy has experienced recent highs and lows, patent protection is still being sought for areas related to e-commerce and the Internet. Thus, the areas of the United States Patent and Trademark Office (USPTO) that examine patent applications related to business method inventions continue to attract public attention. Industry and patent practitioners have voiced concerns about the availability of prior art and the quality of the searches being performed in these emerging technology areas.

The one area in particular that receives the bulk of the public attention related to business method-type applications is the workgroup responsible for examining patent applications in automated business data processing technologies, U.S. Class 705. The majority of business method related applications are filed in this area since the methods and apparatuses claimed in these applications are related to financial and business data processing. However, not all business method claims are classified in Class 705. For example, methods of teaching are classified in Class 434, Education and Demonstration. Methods of playing games are classified in Class 273, Amusement Devices, Games. Methods of improving crop yields are classified in Class 47, Plant Husbandry. These are only a few examples. Other process and apparatus claims which may be labeled a "business method" are classified and examined according to their technology.

There has been some confusion in the patent community over what constitutes a business method claim. "Business method" is a generic term that has been used by many to describe various types of process claims. The Federal Circuit has not yet defined what it is that specifically characterizes a business method claim and separates it from other process claims. The Court has, however, stated that claims drawn to a method of doing business should not be categorized as a "business method" claim, instead they should be treated like any other process claim. State Street Bank & Trust Co. v. Signature Financial Group, Inc., 47 USPQ2d 1596, 1604 (Fed. Cir. 1998).

On March 29, 2000, the USPTO announced an Action Plan for business method patents to improve the quality of the examination process in technologies related to electronic commerce and business methods. These initiatives have provided a forum through which mutual concerns, problems and possible solutions are being discussed, and USPTO operational efforts in this technology area are being shared. Feedback on prior art resources is also being gathered and input on expanding non-patent literature (NPL) information collections and databases is being solicited. There has been active discussion on these initiatives since their inception, and they will not be the focus of this paper.

Instead, this paper defines what constitutes prior art in today''''''''s information age. The evolution of prior art will be examined from its early foundation in published patents to its current non-patent literature and electronic formats. The challenge of identifying prior art in an emerging technology area such as business methods will also be discussed.

II. THE EVOLUTION OF PRIOR ART