U.S. PATENT AND TRADEMARK OFFICE FOCUSES ON BUSINESS METHOD PATENTS There has been recent publicity and concern about the U.S. Patent and Trademark Office's issuing patents for "business methods" or "business models." Such patents include those for accounting methods implemented on a conventional personal computer. One concern is that companies may obtain patents on business methods that might otherwise be available to the public, thereby fettering legitimate competition. Another concern is that a company may inadvertently develop, and come to rely upon, an accounting method that is the subject of a patent awarded to another company. Are these concerns reasonable? There has been a judicial trend to liberalize subject matter criteria for patent protection. Prior to 1998, the criteria was whether the claimed invention related to something physical. For example, in a case involving a computer programmed with a software program analyzing electrocardiograph signals, a court held that the claimed invention was patentable. (footnote 1). Conversely, in a 1994 case involving a computer with software for bidding on multiple items, a court held that the claimed invention was not patentable, stating, "the grouping or regrouping of bids can not constitute a physical change."(footnote 2). Subsequently, in a 1998 decision, called State Street, a court discarded the physicality criteria and held that an accounting program, implemented with application software on a conventional personal computer, was patentable.(footnote 3). Since the State Street decision, there has been a marked increase in the number of new applications for electronic commerce inventions; the U.S. Patent and Trademark Office received 100% more electronic commerce patent applications in fiscal year1999 than in fiscal year 1998. Those concerned about this trend to liberalize the subject criteria for patents may take some comfort in the fact that this trend has not affected the novelty and nonobvious requirements of U.S. Patent Law. Thus, although financial processing may now be proper subject for patenting, a particular patent directed toward financial processing would only be valid if the claimed invention were new and not obvious over the prior art. Thus, for example, a U.S. patent directed to financial processing would be valid only if the claimed invention were new and non-obvious over textbooks by others published before the invention date. Nevertheless, a legitimate concern is whether the U.S. Patent and Trademark Office (USPTO) has an effective procedure for finding prior art when examining business method patent applications. To address this concern, in fourth quarter 1999, the USPTO selected fifteen local law firms having the most business method patent application filings, for a roundtable session in Arlington Virginia. During the session, the firms, including the Jackson Patent Law Office, presented proposals on how the USPTO should search for prior art when examining business method patents.   FOOTNOTES 1.Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053, 1059 (Fed.Cir.1992). 2.In re Schrader, 22 F.3d 290, 294 (Fed.Cir.1994). 3.State Street Bank & Trust v. Signature Financial Group, 149 F.3d 1368 (Fed.Cir.1998). See Generally 1998 COURT DECISION STRENGTHENS PROTECTION FOR SOFTWARE PATENTS   Jackson Patent Law Office, 211 North Union Street, Suite 100, Alexandria, Virginia 22314, United States Telephone +1 703-684-4840, Facsimile +1 703-995-0318, E-mail