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Home > Laws and Regulations > Other Information > Patents and Utility models > Policies concerning Business Method Patents

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Policies concerning Business Method Patents

Policies concerning "Business Method Patents"

November 2000
Japanese Patent Office

The recent rapid development and diffusion of information technology (IT) are dramatically changing not only the methods to process enterprises' internal tasks, but also modes of trading and even the businesses themselves. Because of this, the number of patent applications for IT-applied business methods has been increasing.

Since so-called "Business method patents" can greatly influence various industries, even those that have not utilized the patent system so much in the past, they have attracted considerable attention from the press and various industries.

The Japanese Patent Office (JPO) has been making use of various opportunities in the effort to disseminate information about the criteria under which "Business method patents" can be approved as part of software related patents for the filing trend of "Business method patent" applications). However, in revising the examination standards for inventions involving computer software, the JPO decided to formulate and publish comprehensive policies on "Business method patents", in order to provide more precise information to industries and applicants. The JPO intends to continue its efforts to offer appropriate protection of intellectual property rights (IPRs) in this field under closer cooperation with overseas national patent offices.

1. Clarification of examination standards

Since it is necessary to increase foreseeability of patentability, it is required to set forth what requirements business method-related inventions should meet in order to be patented for. Because of this, the JPO clarified such practice when publishing draft revised Examination Guidelines for computer software related inventions. The JPO also published the FAQ (frequently asked questions) along with the draft revised Examination Guidelines.

1) Revision of examination standards

The JPO revised the Examination Guidelines for computer software related inventions (including business method-related inventions) and published the draft revised Examination Guidelines on the JPO Website to invite public comments.

Public comments were invited for approximately one month until November 22 aiming to finalize and publish the revised Examination Guidelines by the end of this year.

(Reference)Draft revised Examination Guidelines for computer software related inventions.

Clarification of criteria for judging "involvement of inventive step"

The draft revised Examination Guidelines clarify that inventive step would be denied when the invention can be easily conceived through combining publicly known means and methods by those having common knowledge on the business field related to the patent application and technological knowledge on the computer technology.

(N.B.) For instance, inventive step is denied in the following cases:

  • Application of a technology to another specific field
    e.g. creating a &medical data search system" by applying a publicly known "file search system" in the medical field
  • Automation of manual tasks
    e.g. creating a system for receiving orders, which have been received by facsimile and telephone, on an Internet Website
  • Change of design based on artificial arrangements, etc.
    e.g. merely applying a generally known cooling-off system to an e-commerce apparatus

2) Publication of the FAQ

The JPO published the FAQ along with the draft revised Examination Guidelines on the Website for contributing the understanding the said Examination Guidelines.

2. Collection of more wide-ranging data on business related field

The JPO will expand and improve the database on computer software, which also covers the business related field. The purpose is to obtain a wider variety of prior art information that is required within the JPO for determining the &novelty" and "inventive step" regarding business method related inventions. In particular, to expand the database, we will ask economic organizations and industries to offer more materials and information on non-patent documents related to business.

We will also consider cooperative projects on prior art information in the business method-related field to be implemented among the Trilateral Offices of the JPO, USPTO and EPO.

1) Expansion and improvement of the prior art information database

The computer software database, which has been established since October 1997, includes approximately 96,000 documents as of the end of August, of which 12,000 or so are business-related documents. We will make efforts to steadily increase the number of documents, including the materials offered through Item 2) below.

Furthermore, external databases, such as commercial databases, will also be introduced to supplement this database.

2) Request for offers of prior art documents

Aiming to expand the prior art information database, we have been asking economic organizations and industries (including those in finance and insurance) to offer prior art information and documents. We will continue to ask for their cooperation and widely request offers of documents that would be useful in examination.

3) Promotion of cooperation on prior art information among the Trilateral Offices

The Trilateral Offices will exchange information on the usage of external databases, such as commercial databases, in order to improve the ability to search overseas non-patent documents (magazines, academic journals, etc.). In addition, the Offices will start examining methods to mutually utilize information held by each office, giving consideration to the copyright issue.

3. User-friendly search system for prior arts also for use by applicants

It has been pointed out not only by examiners, but also by applicants, that prior art searches for business method inventions are not easy due to the diverseness of the fields of such inventions:e-commerce, money/insurance, financial affairs, payment/settlement, as well as various administrative operations. Accordingly, we have decided to establish a new classification system that subdivides the International Patent Classification (IPC) from these diverse viewpoints, and sequentially classify relevant patent applications under this classification in order to improve the user-friendliness of prior art searches and create an environment under which applicants can easily check the novelty of their applications.

1) Establishment and use of a classification that subdivides the IPC

We will establish and use a classification that subdivides the latest IPC (7th edition) from the viewpoint of each industry and operation. We will gradually reclassify relevant past patent documents totaling approximately 37,000 under the new classification. (Patent Gazettes issued from January 2001 onwards will include indication of this new classification.)

2) Establishment and use of a cross-sectional classification for "e-commerce technology"

We have established and started using a cross sectional classification called ZEC, which covers technology of e-commerce itself as well as e-commerce-compliant element technology and e-commerce-applied technology.

4. Utilization of experts and development of examiners/appeal examiners

Aiming to upgrade the JPO's ability to examine business method applications, we will actively utilize experts from outside organizations for areas in which the JPO has yet to acquire sufficient technical knowledge. In addition, we will increase and enrich opportunities such as internal and external training programs in order to promptly develop examiners and appeal examiners with technical knowledge in this field.

1) Utilization of experts

We will assign experts from outside organizations as advisors and receive advice on common technical knowledge in specific industrial fields.

2) Development of examiners and appeal examiners

We will increase and enrich opportunities such as an overseas study program to take a specialized course on financial engineering, etc., an internship program, and specialized training on various business fields.

5. Efforts aimed at compatible practices among the Trilateral Offices

In light of the recent inter-company disputes over business method patents in the United States, there have been increasing calls for clarification of examination standards and international harmonization of practices regarding such patents. International discussions in this area were also encouraged in the previous Kyushu-Okinawa Summit and Financial Ministers' Meeting.

Under the proposal by the JPO, the Trilateral Offices conducted an international comparison of the judgment of patentability, etc. by using hypothetical applications in the Trilateral Technical Meeting held in June of this year. As a result, it has become clear that, despite the differences in each office's system, the offices are highly likely to make the same judgment on whether or not an application should be patented. The offices also confirmed items including that mere automation of a business process that had been known as a manual process, by way of using a well-known method is not considered patentable.

As the next step, the offices will conduct an international comparison of prior art searches by using actual international applications, according to the agreement reached in the above Technical Meeting.

In addition, the offices will actively exchange information on the handling of business method inventions and trends of court judgments concerning such inventions.

* International comparison of prior art searches by using international applications

In accordance with the agreement reached in the Trilateral Technical Meeting held in June of this year, individual offices will conduct prior art searches for about 20 international applications in a number of different technical fields that have been received by the USPTO under the PCT, and compare the results.

The report will be summarized so as to be adopted in the Technical Meeting in 2001, and will be used to identify problems related to prior art searches.

6. Information promulgation/explanation of business method patents

The JPO has been making efforts to disseminate information on business method patents through its Website and explanatory meetings. However, with the revision of the examination standards, the JPO has planned not only to offer information on the Website, but to explain its comprehensive policies regarding this area by making use of opportunities like explanatory meetings on the examination standards and lectures at various events.

Click for the outline of JPO's policies on business method patents

[Last updated 30 November 2000]

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