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Even the lawyer who is trying to knock out the most controversial business method patent issued says that he’s not impressed with the Business Method Patent Improvement Act, which was recently introduced in Congress. Jonathan A. Marshall, a partner at New York’s Pennie & Edmonds, represents Barnes & Noble in its challenge to Amazon.com’s patent on the one-click method of Internet ordering. Amazon.com Inc. v. Barnesandnoble.com Inc., No. 00-1109. But he doesn’t like the proposed legislation, saying, “I don’t think Congress needs to stick its two cents in there.” Representative Howard Berman, D-Calif., introduced the bill, H.R. 5364, in the House on Oct. 2. Among the bill’s proposals is a requirement that all applications for patents on business methods be published within 18 months of filing, even if the patent has not been granted. This would permit challengers to mount pre-grant opposition, something U.S. officials have labored to persuade other nations to abandon. Additionally, the legislation would empower patent examiners to reject applications as obvious if they differ from established business methods only in their use of computer technology. While no fan of business method patents, Marshall said that the problem does not lie in the wording of the current law, but rather in the difficulty of conducting searches for prior art, a necessity in reviewing patent applications. “The Patent Office doesn’t know where to search,” he said. “Over a period of time, they will come better prepared, but it’s a brand-new category.” Frequent patent critic Gregory Aharonian also has harsh words for the bill. In the most recent edition of the newsletter he publishes through his Internet Patent News Service, he called the measure “another example of contempt for the system as a whole to single out some latest problem area and give it special treatment.” A senior government official who spoke on the condition of anonymity said that while some of the ideas contained in the Berman bill are “interesting,” others are “nonstarters.” That official speculated that the bill’s sole focus on business method patents is not compliant with U.S. treaty obligations, which do not permit different treatment of certain kinds of technology. At the Arlington, Va.-based American Intellectual Property Law Association, Executive Director Michael Kirk said that his organization is working on a “‘white paper’ that deals with the issue of business method patents.” That position paper was scheduled for release around the end of November but, said Kirk, “I think the advent of the Berman bill has accelerated its arrival time.” Patent specialist Jeffrey Brandt, who helped craft some of the business method patents owned by Priceline.com, said that he hasn’t yet “come across anybody who’s looked at the legislation and said, ‘Good idea.’ “ The new law “would inherently build into the system an unfairness,” he said, by granting special procedures for one type of technology. Brandt, who is now president of JLB Consulting Inc. of Fairfield, Conn., said that the new measure would “at worst politicize and subvert what [has] clearly been recognized as the world’s best patent system.” In a prepared statement, Rep. Berman acknowledged that he is not “wed[ded] to the exact provisions of this exact bill.” Instead, he maintains that he introduced the measure “to stimulate the dialogue” about business method patents. A co-sponsor of the bill, Rep. Rick Boucher, D-Va., said in a statement that he was “hard-pressed” to understand how these patents advance “the greater public good.” Instead, they “tend to have the opposite effect by foreclosing entire markets to competition.” Brandt suggested that the measure may have been drafted at the behest of Tim O’Reilly, a Sebastopol, Calif.-based publisher of Internet software textbooks. Earlier this year, O’Reilly posted a suggestion on his Web site that people with concerns about Amazon’s ’411 patent contact Amazon chief executive, Jeff Bezos, directly. By the following day, Amazon.com had received more than 10,000 e-mail comments. O’Reilly said that he did speak with Rep. Berman last April, when he and Bezos called on a number of members of Congress. The New York Times recently reported that last year, Berman and Boucher received more than $230,000 from political action committees representing content industries, including movie and publishing businesses, which generally oppose these patents. However, a spokesperson in Rep. Berman’s office, Stacy Baird, said that the congressman has heard complaints about business method patents from a wide range of “people in the industries, the Internet companies and the patent community.” Changes to the law regarding business method patents might be only the beginning of reform, suggested Baird. “The problems that people have been citing with business method patents are problems that occur in other areas, too,” he said. “It is possible that changes in the patent system need to be considered more broadly.” Earlier this year, Herbert P. Schwartz, a partner at New York’s Fish & Neave, warned that reforms suggested by the Amazon.com CEO, which are somewhat similar to Rep. Berman’s bill, “could be the unraveling of the patent system.” Schwartz was not available for comment on the bill, but Baird downplayed the criticism: “This is probably an overstatement. It’s a reaction people have when you tinker with any area of the law.

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