How to Write Explanatory Documents on Computer Software-Related Invention (Including Business-Related Invention) For Inventors

March 26, 2002
HARAKENZO WORLD PATENT & TRADEMARK Intellectual Property Law Firm
(Takaaki KOJIMA)

I. Grasp of the Invention

A. Grasp the invention by thinking about the effects of the invention at first.

B. Divide the whole process carried out by the system according to the invention roughly into several groups.

C. Clarify whether a person or a computer mainly performs processes for each group.

We recommend that you understand the invention as "Data Processing System For ***" or "Assisting System For ***" (in case of being incapable of a total automation of the system). Note that, the title of invention is not necessarily the above title. II. Extent of Disclosure

A. Disclose the contents of the invention sufficiently in the specification and drawing in such a manner that a person skilled in the art can carry out the invention (enabling requirements). Here, "a person skilled in the art" includes not only an inventor who is in the judgment level of the inventive step but also a general person in the art who is not in the level of the inventor.

B. In case of computer software-related invention (hereinafter referred to as CS invention), describe how hardware and software of computer are structured in the invention so that the production and use of its data processing system is possible. Especially, in case of business-related invention (hereinafter referred to as BM invention, and note that, BM invention is abbreviation for "Business Method invention" or "Business Model invention". In Japan, business-related invention is called "Business Model invention".), detailed description of only its business idea does not mean a clear and sufficient description.

C. Describe specifically and sufficiently what and how inventors intends to carry out in the field which really requires the patent protection. (Please be sure to let us know the matters that should not be disclosed, such as know-how.) III. Effects of the Invention (including the consideration of prior arts)

A. Generally, in case of no similar cited inventions, compare the invention with cited inventions that are closest to the invention if not similar, and find out advantages of the invention.

B. In case of BM invention, it is necessary to consider a business process by a person as prior art.

C. Generally, "technical effects" given in the specifications are effective for insisting the inventive step against publicly known inventions. So, in the CS invention, describe "effects being closer to technical effects" such as "a user operability", "safety in business dealings", or "decrease in communication cost".
In addition to this, in case of the BM invention, describe subsidiary "commercial and economical advantages" such as "provision and selection of proper information", "simplification (usefulness)", "increase of efficiency", and "increase in sales".
Further, describe commercial success and effects unforeseeable from the knowledge of the state of the art because these can be referenced.

D. Incidentally, since general effects such as "can be processed quickly", "can process a large amount of data", "can decrease errors", and "can obtain uniform results", are often obtained as a result of computerization, the said effects cannot usually be said to be unforeseeable from the knowledge of the state of the art.

E. We, intellectual property law firm, must consider how far the scope of right can be broadened. For this, required is the discrimination between public knowledge and non-public knowledge with respect to the invention. The determination of prior arts is therefore essential. IV. Ideas Producing the Effects and What the Inventors Intends to Have Patented

A. If possible, name required elements for each effect.
Making sentences is not necessary, and listing the elements is enough.

e.g. The n-th effect is... For this effect, required
elements are :
...(element 1)...; (explanation of the element 1)
...(element 2)...; and (explanation of the element 2)
...(element 3)... (explanation of the element 3) B. In case of difference between essential parts of the invention (ideas producing the effects) and what the inventor intends to have patented, describe what the inventor intends to have patented (ideas and features) in addition to the essential parts. Note that, in case of the CS invention, the inventor's original concept and the invention's features do not often agree directly . V. Description of the Embodiment

A. Clarification of Roles by a Person and Hardware In describing a business method specifically, clarify the relationship between a person and hardware in the business method. By doing so, it is possible to discriminate between acts by a person and functions of hardware in the BM invention in which a person and hardware coexist, whereby the business method can be understood more clearly. Further, this means that the invention according to claims is described more specifically, thereby helping examiners to understand the invention, satisfying enabling requirements, and certainly increasing the possibility that the invention will be patented.

B. Explacnation of the Business Method
In case of a complicated business method, explain the business method independently before the explanation of hardware and software of its system.
This makes it easy to understand the invention because the business itself is centered.
Therefore, it is preferable to explain "a pure business method" which is separated from hardware, using a concept drawing, at the first part of [Description of the Embodiment], and then, to describe the technical explanation of the hardware and software of the system for realizing the business method.

C. Explanation of the system
(1) Explain the system in accordance with the most preferable form of the system (best mode), and if there have already been a schematic designof the system, explain the system in accordance with it. Thereafter, describe variants of the system.
(2) First, explain the whole system using a schematic drawing, and next, explain each roughly divided group of processes in carrying out the system in order.
(3) In the CS invention, explain the system so as to focus on data (generation, input, processing, output, and deletion of data). In addition to this, in the BM invention, explain the system so as to focus on flows of goods (purchases, acquisitions, etc.) and flow of money (as a kind of data) while considering the whole business method. VI. Drawings
It is preferable that the arrangements given in claims are clearly represented anywhere in drawings .

A. Explanatory Drawing of Pure Business Method (See Figure 1)
This is a conceptual illustration which shows "a pure business method" separated from hardware and software.

B. Explanatory Drawing of the System

(1) Schematic Drawing Illustrating Hardware Provided in the System (See Figure 2)
* This is a schematic drawing of the whole system. In case of a small-sized system, this drawing can be omitted if there are the following functional block diagrams.

(2) Functional Block Diagram of Each Apparatus (See Figure 3)
* This is a system drawing which illustrates divided functional features of each apparatus. This is necessary for clarification of functions of hardware, that is, software. This can be a representative drawing showing schematically the invention.
* Divide the functional features so as to assign one function to one block as much as possible. Add the blocks described in the explanation of processes,
etc. The level that the functions are divided depends on the description of the claims. At least, externally additional functions in the depending claims should be shown as an external block (33) which is connected to main blocks (46, 37). Further, internally additional functions in the depending claims should be shown as an internal block (28) which is included in a main block (24).
* By using a functional block diagram, explanation of an internal arrangement and the operations in the level of the internal arrangement becomes easy.
In other words, by following input/output of data in the level of internal arrangement while referring to data flow and data structure inside the system, it can be easy to explain the internal operations of the system.
Further, it is possible to explain each block of the internal system by making it be a subject.
* In the inventor's explanatory documents, explain the functional blocks (the level of modules and subroutines) which are directly related to the data processing in the operations of the system, and input/output data.
* In case of the browser run by a client, describe the functional blocks in the state that the programs, etc. transmitted from the server are set in the browser.
Show the file name of the data to be stored in a memory, a hard disk,
etc.

œ Prepare a set of three drawings ("flowchart", "data", and "screen") for each group of processes that is divided from the processing in carrying out the system. These drawings are not always satisfactory, but in many cases, they are satisfactory. Of course, prepare other drawings (a drawing of state transition, etc.) that are required for other explanation, depending on the embodiments. The following will describe the above three drawings.

(3) Drawing Showing Processes (See Figure 4 and Figure 5)
* These are sequence drawings showing processes by plural apparatuses.
The object of providing these drawings is to visually understand the relationship between apparatuses.
* Show mainly how the apparatus (a functional block of server/client) performs the processing, not how the person operates the apparatus. At the point, in case of no corresponding functional block, add it to the functional block diagram.
* In case where methods of using the apparatus, etc. are shown in the form of flowchart of the operations by users, show it in another sheet of flowchart separate from the flowchart which shows the processes by the apparatus (or show clearly interation between the operations by users and the processes by the apparatus in a single drawing) as much as possible.
In other words, show the operations by users and the processes by the apparatus separately.

(4) Drawing Showing the Screen Image (See Figure 6(a))
* This is a screen image in each process. This makes the relationship between a user and hardware clear, resulting in the business method being understood more clearly.
* Also, prepare a drawing showing a transition of the screen image (change of screens in accordance with the processing). Provision of plural screen images makes it easy to understand a flow of the processing concretely.
The "Mapion" patent in Figure 7 can be helpful. The drawing in combination with a processing flow and a display screen is suitable for the cases of many display screens.

(5) Drawing Showing Data (data structure) (See Figure 8 and Figure 9)
* Show data structure that is necessary for an operational explanation.
How specifically the data structure is shown depends on the contents of the inventions.
* In case where data are shown in specific examples, show it so as to make the screen image and the contents of data correspond (See Figure 6(a)(b)). C. Drawing Showing Variants

* The drawing is easy to visually understand the schematic arrangement of a variant. Showing drawings for each variant clarifies variations in the number of apparatuses and a mutual relationship between apparatuses.
* For important variants, it is desirable to show the functional block diagram and the above set of three drawings.
D. Drawing of the Prior Art

* Ideally, the drawing of the prior art corresponds to the functional block diagram of the invention (representative drawing). VII. Variants

(1) With respect to each element that constructs the business method (model), it is necessary to consider its variants (addition/deletion/substitution of composing elements). By describing various kinds of variants, it is possible to support claims from various points of views. Insufficient consideration of such variants makes the patent vulnerable to potential "design-arounds".

(2) For example,
* Fields of business (e-commerce, finance, security, insurance, advertisement, distribution, etc.)
*Communication means (the Internet, e-mail, LAN, dial-up, cellular phone, etc.)
* Settlement means (credit card, debit card, electronic money, etc.)

(3) Since the BM invention is generally abstract, a concrete form as the specifications given to the business method (model) may inspire the inventors to produce further ideas, and therefore, it is desirable that consideration of variants is carried out again at the time of checking the draft.

FIG.1

FIG.2

FIG.3

FIG.4

FIG.5

FIG.6(a)

FIG.6(b)

FIG.7

FIG.8

FIG.9