IP NEWS:SOEI Patent & Law Firm

This year again, the Japanese Patent Office published statistical data regarding recent trends in business method-related inventions. According to these statistics, the number of applications for business method-related inventions peaked in 2000, and has been declining ever since. This is thought to show that although there was a boom in business method-related patent applications in 2000, this trend has since been left behind, leading to the current state of affairs. Further, according to these statistics, the JPO granted a patent to only about 8% of these applications, a success rate far below that seen in other fields. Thus, it is clear that the Patent Office deems the vast majority of applications to have low patentability.

Incidentally, what kind of inventions are considered to be business method-related inventions in Japan? Thanks to progress in information technology, it has become possible to make business ideas a reality. In Japan, inventions pertaining to the use of network and software technologies to implement business ideas, and these implementations are deemed to be business method-related inventions.

However, in Japan, an “invention” is defined as a “highly advanced creation of technical ideas by which a law if nature is utilized” (Japanese Patent Law Sec. 2. (1)). Consequently, business method-related inventions must also be highly advanced creations using natural laws. However, since the business methods themselves are not products using natural laws, they are not deemed to be inventions under the patent law.

From this perspective, the Patent Office handles the business method-related inventions as software inventions, but in many cases there is no patentability in the underlying business method in the application.　Consequently, the JPO has determined that many of these cases lack an inventive step?hence the low grant rate of 8% described above.

What sort of business method inventions does the Patent Office refuse due to a lack of an inventive step? For example, the Patent Office has found a lack of “inventive step” in applications in the following categories:
» Application in other specified fields
For example, the creation of “medical information search systems” that apply well-known “file search systems”to the field of medical treatment.
» Systemization of work performed by people
For example, enabling orders hitherto received by fax and phone to be accepted through the Internet or web site and the like.
» Design changes based on artificial decisions
Actually adding cooling-off systems that are generally well-known to electronic commercial devices, etc.

Although the above are only generic examples, it would be a good idea to review the application in view of the points described above before applying for a patent for a business method-related invention in Japan.