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 ［大阪本部］
邮政编码: 530-0041 邮政编码: 105-6121  原谦三国际专利事务所的商标以地图为背景，在这张地图中，表示了1991年登记的发明专利数量的大小。
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  BUSINESS MODEL PATENT KENZO HARA I. GENERAL INTRODUCTION The Patent Law is an industrial legislation, and the ultimate purpose thereof is the "development of industry" (Section 1). Specifically, it is "technique" that has been regarded as the actual object of protection by the Law (Section 2 (1)). Hence, the Law has conventionally given an increased incentive for invention by permitting a monopoly of the particular technique in return for promoting the cumulative development of the entire technique. Consequently, competitive society of the "technical" development was realized, and this society, centering around a manufacturing industry, has developed. On the contrary, in a service industry including bank, securities, insurance, distribution / business logistics and the like, the rapid development of IT such as the Internet has made it possible to establish financial business such as electronic commerce (e-commerce) utilizing the Internet and derivatives. Since it is held that such a service industry has a bright prospect of further growth, the Law should legally support it so as to encourage its steady growth. In the United States, known as an advanced nation of the IT, it has been judged, since as early as the time of Reagan's government (1981-89), that models and ideas in business deserve a strong legal protection by means of patent and that such a protection leads to a contribution to the industrial economy of the States. Decision of providing such a legal support to new business, established in combination of the IT and the service industry, has brought the United States today's national economic prosperity as well as the flourishing business model patents. Incidentally, the Japanese Patent Office (JPO), in hot pursuit of the United States who took the lead in this field, has clearly put forth the Pro-patent policy in recent years. The objects of the policy are to attain (1) quicker grant of a patent, (2) stronger patent effects, and (3) broader protection of a patent right. In addition thereto, in order to promote the Pro-patent policy and to reinforce protection for software-related inventions, the JPO has started to employ mitigated for examination standards of the software-related inventions. Borderless network society of the twenty-first century wherein we reside involves a kind of terror, as delay in establishing an industrial policy may immediately result in a huge damage or lost profit in economy of a nation. Taking this into consideration, it is highly expected that prompt legal supports be provided to the business model patent covering a broad range of business models so as to enable Japan to maintain full power to compete against the advanced nations in the present field. II. EXISTING STATE OF A. Patterns of Business Models (1)Those already eligible for patent protection: (2)Those potentially eligible for patent protection: (a)-(c): (3)Those ineligible for patent protection: B. Three (3) Categories of Software-related Inventions Software-related inventions are roughly divided into the following three categories: (1)Methods (2)Products (3)Computer programs / Computer languages. C. Former Examination Standards / Guidelines of the JPO According to the Patent Law of Japan, invention is defined under Section 2 (1) as follows: "'Invention' in this Law means the highly advanced creation of technical ideas by which a law of nature is utilized." A question of whether the business model patent is effective is attributed to a matter of interpretation as to In accordance with the conventional criteria for the examination of the software-related inventions, the "utilization of a law of nature" in a software-related invention has been refused on the ground that, "when the invention corresponds to a restriction inevitably induced by the use of a computer (i.e. simple use of hardware resources), it is inappropriate to regard such a invention as being invented through the utilization of a law of nature". D. Current Examination Standards / Guidelines of the JPO with Regard to 'Approval of Invention' The JPO currently conducts examinations in accordance with criteria for examination published in 1997 shown below. In Chapter 1 of Implementing Guidelines for Examination Procedure Applied to a Specific Technical Field: Software-related Inventions (1997) (hereafter referred to as Examination Guidelines), the "utilization of a law of nature" in an invention is admitted if the invention meets any of the following three requirements: In case of a business model invention which is a business method whereto a computerized processing is a prerequisite, a question of what is recognized as invention is often judged in light of the above-noted requirement (c) . To comply with this requirement, merely a concrete description as to how the hardware resources are utilized so as to attain a business method is required in claims. With this description in claims, the invention is admitted as an invention under the provision of Patent Law Section 2 (1), and becomes an object of patent protection according to the Law. In the foregoing case, a matter of importance is that the claimed business model in its entirety utilizes a law of nature, whereas it does not matter if the claims partly include non-technical factors or utilize the other laws except a law of nature such as the economic principles. Further, neither technical effects nor economic effects of the claims are questioned. Any category of the claims does not affect the course of judgment in respect of what is recognized as invention . Since the utilization of hardware is a prerequisite to electronic trading over the Internet etc., and to financial goods / merchandises using computers, description in claims as to how the hardware resources have been utilized is sufficient in terms of what is recognized as invention. A question here is to what extent means for applying the hardware resources is materialized, as the Guidelines indicate that "embodiments directly or indirectly showing how the hardware resources have been utilized in the course of processing" must be described in claims. It is noted that, according to the Guidelines, the examination standards in this regard have been eased from the former "simple use of hardware" to the current "utilization of hardware". However, even the latter standard, published in 1997, appears to be somewhat out of date today. When the Examination Guidelines was revised in 1997, Guidelines regarding software was indicated, simply bearing hardware in mind. However, it was not anticipated at that time that a rapid progress of IT would enable business methods to develop to the present state by adopting computer technology merely in three years. An actual problem is seen in strict standards of the "utilization of hardware" and the "approval of invention", which obstructs a grant / approval of the business model patent. As regards examination standards for means for utilizing hardware, it is favorable in view of industrial policy to revise the examination standards and the Guidelines so as to ease them to the level that is no more than a formal requirement. Furthermore, as to the utilization of hardware, it should be judged as a matter of "patentability (inventive step)" obtained by comparing respective claims with prior arts, rather than that of an 'approval of invention'. Incidentally, the following concretely shows utilization of hardware indicated in the Guidelines of the JPO: (1) A . An example of a claim wherein the hardware resources are utilized, but the 'approval of invention' thereof is refused on the ground that it is no more than a 'processing by means of computer'. "An apparatus finding the sum of natural numbers n through n+k by means of a computer characterized by comprising: means for inputting natural numbers n and n+k ; operation means for finding B . An example of a claim wherein a software "An apparatus finding the sum of natural numbers n through n+k by means of a computer characterized by comprising: means for inputting natural numbers n and n+k ; n storage means for storing the inputted n ; n+k storage means for storing the inputted n+k ; [N.B.] According to a person involved in the JPO, the examples above indicated in the Guidelines are inadequate and the 'invention' is recognized even in the example A. (2) A . An example of a claim wherein the hardware resources are utilized, but the 'approval of invention' thereof is refused on the ground that it is no more than a 'processing by means of computer'. "A device for playing cards, which utilizes a computer wherein scoring means for scoring points depending on a task of a card extracted from combinations of a plurality of cards." B .An example of a claim wherein a software invention is recognized. "A device for playing cards, which utilizes a computer, comprising: E. Criteria for Judging Patentability (1)Publicly known business methods There may be some business methods, however, wherein patentability is admitted, even they are publicly known, by a combination with a new element such as a new hardware, or by an addition in part of a new business method, etc. Besides, in case of a computer processing, some inventiveness is usually indispensable therein, and therefor, it is likely that inclusion of such inventiveness within a claim enables the inventive step of the claim to be admitted regardless of its low creativity. What is particularly noteworthy is an invention in respect of customary business models which have been used commercially. Inventions of this kind exists innumerably, but hardly ever written, as they have only been accumulated in the human mind. Thus, the great scarcity of database of precedents makes it difficult to certify the customary business models which have been used commercially as 'publicly known and worked'. It is expected that such a database of prior knowledge or use be supplied although, in reality, this will take a considerable length of time to be attained. Here, it may be effective for making customary business methods patentable to develop a system wherein the computer processing can be conducted for the customary business methods. In that case, it will also be necessary to include concrete descriptions of the adopted hardware resources (i.e. computers) as to how they have been utilized to realize such business methods, and to prove no prior arts have existed. Next, the following will discuss the US patent No. 5,897,620 (issued on Apr. 27, 1999), "Method and apparatus for the sale of airline-specified flight tickets" (hereinafter referred to as 'Counter Auction'), a representative US business model patent dealing with a sales method of flight tickets, etc. Said business model is no more than a customary business method which has been used commercially prior to the above-noted patent, which was used by consumers or mediators such as travel agents exploiting the methods accumulated in the human mind and telecommunication systems such as telephone lines. Namely, no novelty is witnessed in techniques and methods used in the business model, such as the computer technique, the Internet and paying method by credit cards. Likewise, the business method called "A Counter Auction" itself is a simple adoption of an ordinary and customary business method used commercially. For example, the following are a normal course of trading method: inquiring sellers of their goods by telephone, etc., or comparing goods of a seller with those of the others in shops, selecting particular goods among them which appear to satisfy conditions of a consumer within his or her budget, letting sellers compete one another by asking for a discount when the goods do not comply with purchasing conditions such as a purchasing price beyond the budget, purchasing the goods if the conditions are met after the competition, or otherwise, not purchasing / incapable of purchasing the goods. In recent years, shops selling discount flight tickets, etc., have been built almost everywhere in Japan, and therefor, a tight price-cutting race has escalated. In the middle of the present state as above, the business method called "Counter Auction" itself is not at all new. (2)New Business Method More specifically, a condition of being "industrially applicable" (including the 'approval of invention') under the provision of Patent Law Section 29 (1) (Section 2 (1)) is overcome by description in the claims as to how the computer has been utilized in the business model. Besides, the inventive step is admitted as an originative business method is used in the business model. In conclusion, since one claim forms one idea of an invention, patentability of the invention is admitted, provided that an element having the inventive step is included in the claim, even if the element is non-technical one. (3)Prior Art Documents In this way, prior art documents thus hardly exist in case of business model inventions. In addition, few prior applications or prior patents exist with regard to business model patents. Therefore, the majority of business model patent applications are patentable on condition that their claims must include description as to how a computer has been utilized in an invention. Besides, as seen in many US patents, business model patents often include inventions related to so-called a 'profits earning mechanism'. Namely, the business model patents in this regard are potentially capable of earning a huge amount of economic profit, which is enabled by the proliferation of the Internet population today. Further advantage which the business model patents have is found in their manageability. Namely, in order to reduce a business model patent to practice, merely a general purpose computer and a network previously provided are required as a facility therefor. With such a little investment in plant and equipment, anyone can practice a profitable business model without much difficulty. This is accordingly suitable not only to large-scale companies but also to small and medium-scale ones such as venture business companies. As depicted above, the 'profits earning mechanism' and the manageability that the business model patents provide are the reason PTOs have increasingly been flooded with a great volume of business model patent applications at a tremendous pace, as if a gold vein were discovered. F. Recent Examples A Notification of Reasons for Refusal was issued by the JPO on September 24, 1999, in Japanese patent application No. 507889/1992 (Tokuganhei 4-507889; Tokuhyohei 6-505581) for invention entitled "Data processing system for hub and spoke financial services configuration", that is a national phase application in Japan based on a US-based PCT application No. PCT/US92/02163, on the ground that the invention "does not comply with the requirement under the provision of Patent Law Section 29 (1)". It should be noted, however, that a patent was granted for the original US patent application for the same invention as above (i.e. US patent No. 5,193,056 issued on Mar. 9, 1993), which is known as a representative business model patent. Extracts of two (2) material passages from the official action are provided as follows: (a) "Substance / Merit(s) of what is provided to be each means in Claim 1 is a data manipulating process required for a particular accounting management and tax management. This is alleged to be artificially provided by a study based on a system of the Hub and Spoke Financial Configuration, accounting system and tax system." (b) "The subject matter proposed to be an invention by the applicant is a form of utilization of function pertaining by nature to a computer used for data processing, and moreover, said form of utilization has been provided on the basis of studies of accounting process and tax process required for a particular financial service. It is evident from the above reasons that said subject matter did not require any technical considerations, and therefore, it is not admitted to be a 'creation of technical ideas' (Section 2 (1))." [N.B.] The requirement for 'invention' under the provision of Patent Law Section 29 (1) is related to the 'approval of invention' under the provision of Patent Law Section 2(1). According to the official action as above, the 'utilization of a law of nature', but not the 'creation of technical ideas', is certified in the invention. As to the above extract (b), the reason for rejection insisting that "said subject matter did not require any technical considerations" can be rebutted as it is inevitable that the subject matter of the invention in question should more or less have required a technical consideration inevitably. However, in case that the subject matter of the invention can be achieved by ordinary works such as systematization of business conducted by humans and mere computerization thereof, patentability of such a subject matter must be refused on the ground of having 'no inventive step'. F. Recent Reports Definition of an 'invention of a product' under the provision of Patent Law Section 2 is being argued in relation to a rapid growth of the Internet technology. More specifically, according to an article of the morning edition of the Nikkei (February 21, 2000), a question of whether a software program distributed over the Internet can be included in the 'product' (Section 2) has been examined in the JPO, and the examination has now entered the final stage thereof. For example, in order to distribute music over the Internet, new methods are required at each stage of process therefor, from transforming music to a certain signal so as to transmit it through network to actually playing the music by a receiving terminal. The JPO inclines to grant patent protection for a new invention of a method of transmitting music over the Internet if only its originality is certified; the new method excludes a recording medium such as a CD-ROM to which music data are normally written in at each stage of transmission of the music data (i.e. on-line distribution system for music and graphic data). It is reported that, if the JPO reaches conclusion that the 'product' under Patent Law Section 2 can be extended to cover an intangible product such as the music software program distributed over the Internet, the JPO will then consider adopting revised examination standards, etc., where applicable, and should a modification of the Law be unavoidable, they will be hurrying up the preparation of the revised Law. Incidentally, according to an ex-executive of the JPO, it is viewed that the revision of the Japanese Patent Law after the example of the US examination standard will not be made at present stage and that computer programs do not appear to have any problems in terms of exercising the existing Law therefor, and consequently, the JPO intends only to revise the Guidelines to which patent protection will be given. G. Actual Enforcement of Business Model Patent: Problems to be Solved & Measures to be taken (2) (a) In the case of drafting claims for business model patents related to an electronic transaction over the Internet, it is highly recommended to have a scope of each claim limited either to a server computer or to a client computer respectively. A claimed invention can be drafted either as a 'product' (e.g. hardware) or as a 'process' in connection with a set of a server computer and a client computer. Here, in accordance with a doctrine of 'one right to one entire invention', it is vital that a direct infringement is so called only when it involves workings of entire claims (on the basis of either 'product' or 'process'). There is also a possibility that an indirect infringement under Section 101 of Patent Law is applied to a case in connection with the electronic transaction over the Internet although the provisions of Patent Law under Section 101 deeming an act as an infringement "in the case of a patent for an invention of product ... to be used exclusively for the manufacture of the product" (i) or "in the case of a patent for an invention of a process ... to be used exclusively for the working of such invention" (ii) [highlighted by the author] are seldom met. (b) In case of a transaction between a company and a consumer in Japan, it is often the case that deeds of a user operating a client computer are not deemed to be an infringement because the operation is not for business purposes. [N.B.] In the US, drafting a claim within the scope of a client computer is effective. (c) In case of an infringement of a business model patent with regard to, for example, an on-line distribution method consisting of sounds, images etc., a question remains uncertain as to whether an infringer is an Internet service provider, a line provider, or both of them. Accordingly, it is highly expected that the Board of Bar of Japan will soon provide a united view on ways of enforcing business model patents in Japan. (d) It is of great importance to always take extant foreign business model patents into consideration in view of the borderless cyberspace. When, for example, a Japanese company conducting business on the web site is alleged to have infringed a patent right subject to the US Patent Law (i.e. 37 CFR), a question arises as to whether an action can be taken on the basis of the US patent in this case. This naturally falls within the jurisdiction of the US Patent and Trademark Office (hereinafter referred to as US PTO). Consequently, the situation of the case is anticipated to assume an acute phase since, according to Hague Agreement, jurisdiction or standing based on US patents related to an Internet trading covers foreign nations including Japan, while jurisdiction or standing based on the Japanese counterpart covers foreign nations including the US. (e) In case of a litigation for an infringement, to ascertain to which country an Internet server concerned belongs will be a primary issue, as the whole world is involved in the market of the Internet. In principle, on the basis of Berne Convention administered by WIPO wherein Copyright Law concerning the Internet is provided, a nature of the infringement is determined in accordance with the law of a country to which the Internet server belong. In this new copyright treaty, articles such as protection of works transmitted via information network using a computer is provided. It should be noted that the US government has taken a firm attitude declaring that they will take drastic measures against any incidents of an infringement related to the Internet, even if an Internet server offended a US resident or infringed a US copyright belonged to a non-member state of the Berne Convention such as Ethiopia and Afghanistan. Accordingly, Japanese (and the other non-US) companies are highly recommended to take the above into consideration and prepare for a potential incident of an infringement, remembering the following: an act of the Internet trading involves a potential risk to infringe a US patent right (1) when a non-US company, establishing an Internet server within the territory of the US for the purpose of reducing costs, develops domestic services; or (2) when a US Internet user has a direct access to services provided by a non-US company whose Internet server is established domestically. (3)Conclusion In this way, although the most material task imposed on Japanese companies in the 21st century is to survive in the Internet business market, it is the US who is taking the initiative therein. A heavy burden has thus been laid on the Japanese companies conducting the Internet trading. H. Representative Business Model Patents Majority of business model patents are classified into International Patent Classification (IPC) No. G06F17/60. No more than a hundred Japanese patent applications which have been laid open are classified to be business model patents. In addition, it is observed that business model patent applications filed in the JPO have been applied mainly by foreign affiliated firms, and in particular by American firms. The following provides a list of major business model patents granted in Japan: 1. Japanese publication for examined patent application No. 41105/1988 (Tokukosho 63-41105) ('Determining system for linear arrangement of clients') In the US, known as an advanced nation of the IT, the government has effectively positioned IP rights from a clear point of view as to what sort of an IP policy they should adopt so as to bring their nation economic profits. The government has viewed that business models and business ideas make a great contribution to their economy, and therefor a strong patent protection is required. In the US in particular, a number of the business models and the business ideas have successively been produced, supported by a rapid growth of the Internet population. Industrialization of the business models and the business ideas results in promoting a totally new industry which gives new employment. Some promoters of such a new business are successful enough to have obtained substantial profits in a short term. In addition, such successful promoters have appeared in succession in the US. Accordingly, all of these form the motive power of the current prosperous economy of the US. In other words, the greatest economic market in history and the prosperity of the US today have proved that the adoption of their new IP policy was absolutely correct, and legal supports provided to new business have brought the US the current prosperity of the business model patents. Meanwhile, so-called a 'net business' utilizing the Internet for business (e.g. electronic trading) has grown larger at a rapid pace in the US. Under such circumstances, patents are granted for new software programs adopting new business models made through the utilization of the Internet and the elaboration of the existing business. Incidentally, Mr. Jay S. Walker's example is worth being introduced here. Mr. Walker, who invented business models such as a 'Counter Auction' and an 'Insurance for Foreign Exchange Transactions', and is thereby a pioneer of the business model inventions, established a laboratory for an exclusive production of the business model inventions. Mr. Walker adopted a practical method of organizing inventing teams, each of which consists of specialists of information, business and laws respectively, and already filed more than three hundred business model patent applications from his laboratory. The US government and the US Patent and Trademark Office are both willing to grant patents for inventions related to the net business including the business model inventions. Moreover, it appears as if they aim to control the global net business market as a part of their economic strategy of the state. B. A Study of US Practices (1) Under 35 U.S.C. 101, it states that inventions patentable include "any new and useful process, machine, manufacture, or composition of matter". It is noted that it excludes a condition as to a law of nature as is provided in the Japanese Patent Law. Business models such as an electronic trading, finances, securities, insurance goods, advertisements and a management of goods in stock are applied to said "process" or "machine" (35 U.S.C. 101), and criteria for judgment as to whether they are patentable depend on a question if they bring 'useful, concrete and tangible results' . This criteria for judgment was first indicated in 1998 in the 'State Street' case in connection with the 'Hub and Spoke' patent (US Patent No. 5,193,056) by Court of Appeals for the Federal Circuit (hereinafter In AT&T Bell Laboratories case with regard to invention entitled "Call message recording for telephone systems" (US Patent No. 5,333,184 issued on Jul. 26, 1994), the CAFC determined said phrase 'useful, concrete and tangible results' to be a standard of judgment. The CAFC ratified the preceding judgment of the 'State Street' case, insisting that patentability should be judged in consideration of 'useful, concrete and tangible results' such as economic advantages of price, profit and the like. In addition thereto, it is held that the 'useful, concrete and tangible results' should be construed to be effective in an entire phrase but not in each separated word. In this regard, patentability of an invention is recognized if 'economic advantages' can clearly be set forth from the entire invention. Since the majority of the business model patents are concerned with a 'profits earning mechanism' and aim at economic advantages by nature, most of US patent applications related to the business models will be patented. In the US, the judgments of the two cases introduced above are said to be present and future examination standards for business model inventions. Namely, it has been confirmed that objects producing the 'useful, concrete and tangible results' are recognized as invention. Examination Guidelines published by US PTO in 1996 will therefore be revised in the near future. (2) Grant of an exclusive technical classification number '705' to business model inventions by the US PTO in 1997 concedes that the US has recognized a materiality of the business model patents since an early stage. Consequently, it is held that the number of patents applied to the technical classification No. In particular, after the judgment of the State Street case in 1998, patent applications related to business models enormously increased suddenly, and it is now held that the US PTO has recently granted a business model patent to approximately thirty (30) cases a week. Again, this remarkable number of business model patents in the US is attributed to the fact that the government of the US, commonly recognized as an advanced nation of the Internet, adopted a strategic IP rights policy and thereby intensified their advantages in terms of taking the lead in the net business. Accordingly, developers of a software program combined with a business model have secured patents one after another nowadays. Incidentally, patent applications filed with the JPO in the year of 1996 amount to 401 thousand (401,000), whereas that with the US PTO 224 thousand (224,000). Judging from this ratio obtained by the above comparison, the number of Japanese business model patent applications should have already reached seven or eight thousand (7,000 - 8,000). However, as a matter of fact, the total number of Japanese business model patent applications published by the JPO is currently said to be no more than a hundred (100). (As a practice of the JPO, any information with regard to newly filed patent applications is never published in the statutory period of one year and six months (i.e. from filing date to published date). Accordingly, an actual number of pending Japanese business model patent applications including those to be published later remains uncertain. However, such business model patent applications to be published are presumed to amount to some hundred [N.B.] Effective from November 29, 2000, the US PTO will adopt a practice to publish patent applications, only for US patent applications having counterparts thereof already filed in foreign patent offices. (3) In the US, in fear of a potential bad influence brought by the flooding business model patents on commercial activities, the US Patent Law was amended in part on November 29, 1999. According to the amended Law, anyone who has actually carried out a business method as well as utilized said business method commercially, more than one year prior to the filing date of a patent application for said business method filed by the others, has right to raise a protest against an allegation of patent infringement (35 U.S.C. 273 (b)(1)). It should be noted that the above have legal effect merely as regards practice and commercial use of a business method taking place in the US and its territories. (4) Examples of major infringement litigations concerning business model patents are given as follows: (a) Signature Financial Group, Inc. v. State Street Bank & Trust Co. Signature Financial Group, Inc. sued State Street Bank & Trust Co. for infringement to the US District Court. Following the judgment of invalidity of a patent by the District Court, the plaintiff addressed an appeal to the CAFC in 1998, and thereby a validity of their "Hub and Spoke" Patent (US Patent No. 5,193,056) was confirmed. Although State Street Bank & Trust Co. appealed against decision of the CAFC to the Supreme Court, the Court dismissed it. [N.B.] This case is controversial because of the judgment permitted a monopoly of a technique used for the one-click function by Amazon.com, Inc.. Although 'free of charge' should have been a motto of the Internet, the one-click patent imposes the alternative of making a license agreement with Amazon.com, Inc. or giving up the one-click function upon all companies providing on-line shopping site using the same function. It cannot be overlooked here that giving up the one-click function actually means giving up on-line shopping business. Hence, Mr. Richard Stallman, the president of GNU and the founder of Free Software Foundation (FSF), issued an official statement to criticize the US PTO and CAFC on the ground that they had granted the one-click patent without careful consideration of aftereffects caused by the patent. Mr. Stallman launched a boycott against Amazon.com, Inc.. and has invited Internet users to join him. (e) SBH v. Yahoo SBH, a patent marketing company whose headquarter is located in St. Lewis, sued Yahoo for infringement on November 20, 1999. SBH insisted that Yahoo infringed a patent right of their "Shopping Cart" patent (US Patent No. 5,895,454). [pending] [N.B. The patent right of the "Shopping Cart" patent was assigned by Harrington (a proprietor of New Zealand)] (f) Double Click v. L90, Inc. L90, Inc., a marketing company, sued Double Click for infringement of their patented DART technique on November 20, 1999. [pending] The following is a list of representative US business model patents: 1. US Patent No. 4,346,442 "Securities brokerage-case management system" (Merrill Lynch, Pierce, Fenner & Smith Incorporated) (a) discoveries, scientific theories and mathematical methods; However, the above subject matter or activities will be excluded from patentable inventions "only to the extent to which a European patent application or European patent relates to such subject matter or activities as such" (Article 52(3) EPC) [highlighted by the writer]. As is clear from the above, those relate to business model patents such as the schemes, rules and methods for performing mental acts, playing games or doing business, and the programs for computers are not regarded as inventions insofar as they are claimed as such, as far as European Patent Convention (hereinafter referred to as EPC) is concerned. In this way, implementation of a technical aspect is essential in the EPC so as to recognize a patentability. Hence, in case of a business method (e.g. methods of finance, insurance, advertisement etc.) seeking an European patent, the subject matter claimed should be concrete, and add a contribution of a technical character to the known art. If such requirement is met, the business method will be patented even if it includes a non-technical part. An Examining Division of the European Patent Office (EPO) admits that the 'technical character' can be detected in the subject matter, means, or effects of an invention. Accordingly, in Decision T1173/97 (IBM) of Technical Boards of Appeal, that resulted in recognizing computer program products as patentable, it has been held that inventions to give rise to further technical effects are recognized as patentable. Consequently, a patentability will be recognized in a business method utilizing a computer when a 'further technical effect' surpassing normal functions and operations of the computer is detected. Incidentally, it has presently been argued on a revision of Article 52 EPC for the purpose of recognizing 'inventions of any technical fields', and the existing law that has eliminated computer programs and business methods is in the process of reexamination. The following will provide a list of five representative Decisions of the EPO: 1. 'Ingredients distributing method and practicing device therefor' (T636/88) A. Introduction According to Trigger, Japanese manufacturing companies, of which electric manufacturing companies in particular, have filed numbers of business model patent applications in the JPO in past few years, for the purpose of self-defense. However, it is viewed that, as far as the subject matters are concerned, the majority of the business model patent applications will only be able to pass an examination in the US but not that of the JPO at present stage. B. Motivations and Purposes (1) if a business model patent application cannot be awarded a Japanese patent, it is still possible to file a foreign counterpart based thereon in a foreign PTO such as the US PTO; C. Conclusion These circumstances above will soon or later constitute keen competition over the net business in Japan, in which the Japanese companies may fight against heavy odds. VI. CONCLUSION (PROPOSITION) Five (1) Discussion among the trilateral patent offices (i.e. JPO, US PTO and EPO) or between Japanese and US governments is urgently required in order to share a common understanding as to how a business model patent should be enforced in connection with the utilization of Internet. As far as the US is concerned, it is evident that the prosperity of business model patents has been brought about by development of their Internet-related business, supported by a pride and efficiency of an advanced nation of the Internet. Moreover, it is not too much to say that the prosperity of the US industry is owing mainly to an IP rights policy adopted by the US government (i.e. US PTO / CAFC) so as to give positive aid and protection to business model inventions, namely, grant of business model patents. Regarding examination criteria for business model inventions in the US, they are obviously less strict than those of Japan although both cannot be compared simply, due to different types of criteria. In reality, numbers of business model patents hitherto granted in the US are not recognized as patentable in the light of the examination standards and Guidelines based on the existing Japanese Patent Law. On the contrary, only few Japanese patents exist that will not be patented in the US. As discussed in chapter II above, the 'Hub and Spoke Financial Configuration' case may be a good example to compare examination results of Japan and the US. Meanwhile, an emergence of business model patents utilizing the Internet has raised a serious issue. Namely, it is now concerned that the established principle of having an independent patent system in each country has started to collapse because of the multinational Internet. Accordingly, a risk of infringing right of a US business model patent related to the net business is unavoidable for Japanese, and the other non-US, companies providing business on the Internet having no frontiers. This kind of risk is presumably unique to the net business at present. Even the US government could not predict a current state of the Internet, wherein a whole market thereof is globally controlled by only one strategic policy of a nation. Therefore, as indicated in the above, a formal international agreement for enforcement of the business model patents utilizing the Internet is required now. Incidentally, it has been reported that a formal meeting of the trilateral patent and trademark offices will be held in Berlin, Germany, on November 12, 2000, where a comparative study with regard to dealing with the business model patents will be undertaken. It should be noted, however, that the EPO is planning to give up attending the meeting this time on the ground that they will be engaged in reexamination of the EPC to be revised. (2) The Japanese government (i.e. JPO) should urgently reexamine their policy with regard to Japanese business model patents. More specifically, as in the US Patent Law, examination criteria in terms of (i) 'utilization of a law of nature' should be mitigated, and (ii) those of 'approval of patentable inventions' should be mitigated to be a mere formal requirement. If these were actually adopted, Japan will enjoy enormous profits made by the business model patents. Accordingly, as far as the business model patents are concerned, the less strict the examination criteria are, the more profits are brought to a nation as in the US. Therefore, the Japanese Patent Law, as an industrial legislation, should employ a policy adopted by the US in this regard. (4) It is highly recommended that a company, whether it is a big business or a venture business, reexamines its IT development strategy and excavates more patentable business models so as to obtain profitable business model patents. Moreover, this should be done from a user's point of view, since a majority of the business model patents consist of ideas obtained in consideration of convenience for users. Obtaining a business model patent is attractive because it enables anyone to have a chance to succeed in business with a humble amount of (5) The following provides means to prevent Japanese (non-US) companies from running risks of infringing a patent right of a US business model patent so as to conduct the net business safely: establishing an Internet server within a territory of a country where business model patents do not exist (e.g. Japan), forbidding users, merely who belong to the US having business model patents, to access to a service which applicant provides on the web site. However, this involves fatal disadvantages in terms of (i) contradicting the principal object of the Internet, i.e. to provide its users with unlimited global services freely and easily, and of (ii) losing the US market that occupies a major part of the entire Internet market 1. "Patent bombs set by the USA: business model patents." Trigger (Jan., 2000). |
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