Web Systems Design and Online Consumer Behavior [Electronic resources] نسخه متنی

Solutions and Recommendations

Government Solutions to Software and Business Method
Patent Issues

The USPTO has taken steps to curb abuse of the patent system by patent applicants seeking to
patent well-known but poorly documented software technologies. Partially in response to public
criticism of business method patents, Congress passed the American Inventors Protection Act (1999).
This statute provides that if a business has been using a business method a year or more before
another party files a patent application for that same business method, the business has an
automatic defense to an infringement lawsuit. This legislation protects businesses which were using
a software technique, before business patents became widely accepted, and did not take steps to
patent their invention (Bernstein & Silver, 2000). This legislation goes a long way toward
protecting the consumer’s interest in having access to a wide variety of Web interfaces.

Also, as part of its Business Initiative, the USPTO published a list of databases that patent
examiners must search before they award or deny a patent. The list includes ABI/ INFORM, the
Conference Papers Index, Wall Street Journal Abstracts, NTIS, Dialog, and others (Nigon &
Etkowicz, 2002). In the event that a business method patent is initially allowed, the USPTO then
initiates a second-level review, which evaluates the broadness of the patent claims and whether an
adequate search of the prior art has been conducted (Petty, 2000).

A Role for Industry Associations

Industry associations such as the New York Software Industry Association and the Software and
Information Industry Association can play a vital role in alerting the USPTO and the public to
software and business patents, which might prove harmful to e-commerce, and should not be awarded.
Individuals such as the gadfly Greg Aharonian, whose Web site
www.bustpatents.com lists invalidated
patents, also play an important role in this process.

Software Patent Institute Database

The Software Patent Institute (SPI) is a nonprofit corporation dedicated to providing
information on the software prior art, i.e., software that exists whether patented or not. In
addition to holding courses for patent examiners, the Institute concentrates on compiling a
Database of Software Technologies, which contains information that is not readily available
elsewhere. SPI has a Defensive Disclosure Service which allows an organization to enter a software
technology into the database by the next business day, possibly heading off a lawsuit or laying the
groundwork for invalidating a patent. Abstracts are searchable online at
http://www.spi.org/NewQry/main at no
cost.

General Suggestions

Web site designers, like other IT professionals, should make a commitment to joining a
professional association and reading trade journals regularly. This is a good way of keeping
abreast of which technologies are protected by patent, copyright, or trademark. Also, corporations
should involve the legal department in reviewing Web sites. Legal staff should take steps to
understand which business methods or software are being used and to review the site from the
standpoint of avoiding patent and copyright infringement. In some cases, patenting a technique may
be advisable. Independent Web site designers and their customers should review their Web site
development agreements, with regard to any work product warranties related to infringement, as well
as the provision of liability insurance.