This Article contends that part of the problem of Internet business model patents is the narrow view of analogous art employed by judges and USPTO examiners which largely excludes relevant "real-world" prior art in the determination of non-obviousness under § 103 of the Patent Act. Consequently, part of the solution lies in helping courts and the USPTO properly to define analogous art for a particular invention. To do so, judges and examiners must recognize the interchangeability of computer programming (i.e. "e-world" activities) to perform a function, with human or mechanical performance of the same function (i.e. "real world" activities). Such recognition is consistent with binding United States Supreme Court precedent and requires a reversal of the trend towards narrow analogous art definitions in the obviousness inquiry. This Article also identifies an increased potential for abuse of the doctrine of equivalents in the Internet business model context due to a combination of factors that impact the usefulness of traditional controls on the application of the doctrine of equivalents. Such factors include a dearth of properly trained business method USPTO examiners, and a lack of business method and software prior art readily available to examiners to consult in assessing the patentability of such methods. To the extent such factors result in Internet business model patents with the scope, by default, of "pioneer" patents, limitations on application of the doctrine of equivalents are necessary. To lay the groundwork for this dual analysis, Part I of this Article provides a look at Internet business model patents in light of key patentability requirements mandated by the Patent Act. Part II traces the evolution of the analogous art component of the non-obviousness determination and illustrates how the malleability of the doctrine, as exemplified in several Court of Appeals for the Federal Circuit decisions, has particular relevance to prior art definitions for Internet business model patents. Part III of this Article then examines the doctrine of equivalents and explores how the likelihood of improper application of this doctrine in the Internet business model context is increased. Recognizing that feasible solutions are not limited to doctrinal remedies, this Article also mentions other, more drastic ways of addressing the Internet business model conundrum. It concludes, however, that rational exercise of the elasticity present in both the doctrine of analogous art and the doctrine of equivalents provides a better approach to defining proper Internet business model claim scope.
Margo A. Bagley,
Internet Business Model Patents: Obvious by Analogy,
Mich. Telecomm. & Tech. L. Rev.
Available at: http://repository.law.umich.edu/mttlr/vol7/iss1/7