Because of its length, the chapter is famous in parts. Here is the fifth and last part.
At the same time as the debate between supporters and opponents of software patent protection, in recent years there has been a minor revolution in the way courts treat the granting of patent protection for methods of performing business operations and business management.
3.7.1 The State Street Bank case [1]:
In this case, it was a bank called State Street that challenged a patent issued for a computerized method of managing accounts, used to manage the investment structure of mutual funds, on the grounds that the patent is invalid and unenforceable. The District Court in Massachusetts accepted the bank's argument and ruled in its favor.
In light of this ruling, the patent owner (Signature Financial Group) appealed, and in the appeals court it was determined that the patent was registered in relation to the device and not in relation to the process, that the invention, contrary to the bank's claim, does not fall into the category of a mathematical algorithm, (which cannot be registered as a patent) and that there is no impediment that the law registers the said method as a patent.
In essence, the ruling states that methods of conducting business are subject to the same criteria required by law for the purpose of registering any process or method, provided that they meet all the other criteria required as stated.
The precedential importance of this ruling as determined by the appeals court is that this is the first time that it has been determined unequivocally that a method for carrying out business operations is patentable and worthy of protection as such.
3.7.2 The PriceLine case – Microsoft:
A case similar to the one discussed in the State Street Bank case deals with a business idea called Conditional Purchase Offer, which is a "reverse electronic auction", that is, a kind of auction in which the customer addresses a commercial company, for example an airline, and offers to purchase a plane ticket to a certain destination, on a requested date and at a price specified by him . The company checks the available seat inventory and, if possible, responds to the customer's offer.
The PriceLine company is the one that developed the aforementioned model, as part of a wide range of services it provides, so that its website will serve as an "intermediary" between the customer and the airline he chooses to contact.
After developing the idea and registering it as a patent in the USA, the company established a business relationship with Microsoft for the purpose of establishing a joint venture for both.
At the same time as the business conduct between the two parties, and before a binding contract for cooperation was signed between them, Microsoft came out, at a somewhat surprising time, with its own Internet service that allows Internet surfers to participate in a tender in which they will offer price offers for booking hotel rooms, all this in a manner reminiscent to a large extent of The business idea of Priceline as mentioned above.
The Priceline company, which is known for stubbornly and consistently defending its rights and property as far as the principles it has developed for the matching between sellers and buyers, hastened as expected to file a lawsuit in the US District Court in Connecticut against the Microsoft company, alleging infringement claims in relation to one of three patents registered in its name and which Engage in services related to pricing by a consumer using a tender system.
The affair recently came to an end through a compromise in which Microsoft compensated Priceline with royalties payments.
3.7.3 The Amazon.com Ltd. case. V. Barnes & Novell Ltd
On September 28, 1999, an American patent numbered 5,960,411 was registered to the credit of the Amazon company (Amazon.com) whose purpose is to simplify the purchase processes on the Internet. The patent allows surfers-buyers who have already purchased on Amazon's shopping site, to purchase products from the site with one click (1-Click), instead of going through several screens on the way to the purchase.
Shortly after the patent was granted, Amazon filed a lawsuit for an injunction against its major rival, Barnes & Novel, which operated a similar sales method, for violating Amazon's rights in the patent, a step that caused a great uproar in the legal world, when Amazon was granted the requested injunction by The first court. The granting of the injunction resulted in tremendous public pressure on Amazon to give up its patent or at least to enforce it. Under the pressure, Amazon CEO Jeff Bezos issued a public letter[2] To the company's customers, in which he proposes a reform of the American patent law, under which a business method patent will be protected for only 3-5 years.
The injunction issued against Amazon was canceled by the appellate court on February 14, 2001, due to significant deficiencies that Barners and Noble managed to raise regarding the question of the patent being worthy of protection in the first place. Similar complaints were raised by the Japanese Patent Office, which refused to register Amazon's patent in Japan[3]. Although,
The appellate court did not rule on the question of the validity of the patent, and the question of its validity remained open and will only become clear if Amazon chooses to continue with the lawsuit, or file additional lawsuits for violating the same patent.
At the same time, the Amazon affair brought tremendous awareness in the US and the world regarding the policy of the US Patent Office to allow the registration of patents on business developments, and to observe the number of applications for such patents submitted and received every year.
3.7.4 T.A. 1350/98 Marwax Ltd v. Chen-Eilat
In March 2000, the District Court in Jerusalem ruled, similar to the practice used in the USA, that a computerized system that runs a computer program that embodies some operational function is eligible for registration as a patent.
It follows from this that whenever a computerized system or computerized means leads to a useful, new and inventively advanced effect, the inventor's practice must be recognized and a patent granted for the computerized development.
3.7.5 Request to revoke patent 142049 Girafa.com Inc. Against Oded Melnik, voila! Communication Ltd. and Netvizhach Ltd.
On December 28, 2005, the Honorable Judge canceled the intellectual property of Noah Shlomowitz, a patent granted for "a method and a display that includes a list of Internet curators". In the decision, the Honorable Judge ruled that the patent did not meet the requirements of Section 4 of the Patent Law [4] (the "Law") where the renewal requirement is defined as follows:
"An invention is considered new, if it has not been published publicly, either in Israel or outside of it, before the date of the application -
(1) by description, in writing or by sight or voice or in another way, in a way that a professional can perform it according to the details of the description;
(2) By exploiting or presenting, in such a way that the professional can perform it according to the details intended in this way."
The legal claims that led to the cancellation arose from the fact that the technology for displaying Internet sites in the form of thumbnails existed in several previous publications, among others in Windows 2000, Internet Explorer, Cockburn [5] and a number of other sources detailed in the decision.
The claim that a patent did not meet the requirement of "inventive progress" as defined in section 5 of the law was also accepted:
"Inventive progress is progress that does not seem like a matter of course to an average professional based on the news that has already been published, according to the date of the application in the ways mentioned in section 4"
Although the cancellation of the patent in itself was done in light of the above claims, the arbitrator also conducts a discussion regarding the patentability of computer software versus the protection given to software in respect of copyright. In this case, the Honorable Judge says, "We are interested in an invention that is in the field of content, and doc, not a computer program which the legislator compared to a literary work, but in a distinct content, which is an idea for the configuration of computer output. As such, the invention does not constitute a technological product or process and does not qualify for a patent."
3.7.6 Patent application 131733 by the applicant Eli Tamir
The decision of the Registrar of Patents in this case is a comprehensive decision dealing with the granting of a patent for a business operation and from it you can learn about the current trend in Israel regarding the registration of patents for a method for business operations.
On September 21, 2006, the Honorable Registrar of Patents, Designs and Trademarks, Dr. Meir Noam, gave a detailed and learned decision regarding the Registrar's tendency to approve a patent for a method of doing business in Israel. His decision reviews the situation in the world today and the different approaches to this type of patent with an emphasis on the American and European approaches.
The registrar's decision distinguishes between a business operation patent and a "hybrid" patent, and specifically refers to the registrar's trends regarding computers, business methods and hybrid patents in chapter D of the decision. It can be learned from the decision that a computer program by itself cannot be registered as a patent. The registrar refers to the copyright law for the protection of the code of computer programming (while citing this book) and refers to the amendment to the copyright law which includes in the definition of the deceased "literary work" computer code as well. Notwithstanding the above, the registrar recognizes a calculated system as a source of "tool creation" entitled to "special" treatment as a hybrid invention.
"A hybrid invention is an invention that is partly in the scope of patent-eligible inventions and partly in the scope of inventions that are not patent-eligible" [6].
The registrar considers computer systems to be hybrid inventions and therefore states that "in the field of business methods based on computer systems, where the business method in itself is not eligible for a patent but the computer system as a whole used to carry out the business method is eligible for a patent" [7].
[1] State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)
[2] http://www.amazon.com/patents
[3] http://www.thestandard.com/article/0,1902,24439,00.html
[4] The Patent Law, 1967-XNUMX
[5] Cockburn A. Greenberg S. (1999), "Issues of Page representation and Organization in web browser's revisitation tools, Proceedings of the OZCHI'99 Australian Conference on Human Computer Interaction November 28-30, Wagga Wagga, Australia.
[6] See patent application 131733 by the applicant Eli Tamir, page 20 and see also:
http://www.computer-law.co.il/content/publications/content/articles/pictureEng.aspx?table=tblArticlesHeb&id=1
[7] See above.
Link to the first part of the series
Link to part two of the series
