Tis the Season for Gift Returns and Business Method Patents

January 21, 2011, 2:47 PM

Recent media reporting on a new patent issued to Amazon for a System and Method for Converting Gifts has focused on changing attitudes towards gift giving and acceptance inherent in the subject matter of this patent. That is, instead of thanking Aunt Mildred for her latest gift and bringing it out of storage whenever she visits, the new Amazon system will if she purchased the gift online let you have the online retailer send Aunt Mildred a thank you note for the gift she gave you and at the same time let you convert the gift to something you really want. Leaving aside how Miss Manners and the Emily Post Institute may feel about the process patented by Amazon, the issuance of their patent underscores the continuing quest for business advantage through patenting of business methods and processes, and the continuing willingness of the U.S. Patent and Trademark Office to issue business method patents.

In its decision in Bilski v Kappos in mid-2010, the U.S. Supreme Court declined to rule that business methods are not patentable subject matter and, in fact, loosened the standard for them previously articulated by the U.S. Court of Appeals for the Federal Circuit. That standard will continue to evolve through future court decisions, but for the moment patenting of novel and non-obvious business methods remains a viable pathway to competitive advantage for companies that can afford it. This is especially so when the claim of legal rights in the business method in question can be interwoven with claims to a computer-based or other technological means of facilitation, as in the Amazon patent, which characterizes the subject matter of the patent as a computer-implemented data processing system comprising a user interface and gift conversion logic. --Robert E. Smartschan