The Patent & Trademark Office (PTO) inquiry into patent- eligible...

and public debate on such patents since the agency’s last software patent review, in 1994, Schruers said in a filing. PTO should consider joint 2002 FTC/DoJ hearings on competition and intellectual property (IP) law and policy “useful models,” he added. PTO’s “lack of hearing or consultation on business methods as a matter of substantive policy is also surprising,” since 2 late-1990s court cases “swept large areas of economic activity into the patent regime without the consent of Congress or the input of the businesses and sectors affected,” he said. A Supreme Court refusal to take up LabCorp v. Metabolite, involving the eligibility of “abstract processes” (WID June 23 p11), “appeared to reflect a view that the issues were not adequately developed in the record,” and in time the high court will accept review, Schruers said. Until then, though, PTO’s review could give businesses much-needed guidance, he added. Regarding whether signals such as those underlying Internet transmission and associated technologies can be patented, Schruers said allowing that would hit ISPs and other “network intermediaries.” Other filers told the agency signals are clearly patentable (WID Aug 18 p4). But if signals get IP protection, “they may implicate secondary or ‘contributory’ infringement risks” for businesses transmitting information, Schruers said. Any change would affect DMCA Sec. 512 and treaties the U.S. has signed, including the Dominican Republic-Central American Free Trade Agreement, all of which limit secondary liability for infringement, he added. Talks at the World Intellectual Property Organization on broadcasting rights have broached creation of a sui generis IP right in signals themselves, which “may conflict with or prove redundant” to a PTO action rendering signals eligible, Schruers said. PTO action also could raise preemption issues concerning state laws on “signal theft,” he added.