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FICPI 6 TH OPEN FORUM Yoshikazu Tani TANI & ABE No. 6-20, Akasaka 2-chome Minato-Ku, Tokyo 107-0052 TEL: +81-3-3589-1201/FAX: +81-3-3589-1206

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Presentation on theme: "FICPI 6 TH OPEN FORUM Yoshikazu Tani TANI & ABE No. 6-20, Akasaka 2-chome Minato-Ku, Tokyo 107-0052 TEL: +81-3-3589-1201/FAX: +81-3-3589-1206"— Presentation transcript:

1 FICPI 6 TH OPEN FORUM Yoshikazu Tani TANI & ABE No. 6-20, Akasaka 2-chome Minato-Ku, Tokyo TEL: /FAX: ©2001 Yoshikazu Tani, TANI & ABE All Rights Reserved. Session 1.4 “ Making bricks from straw – Claiming of business methods ” 15 November 2001

2 CONTENTS Session 1.4 “Making bricks from straw –Claiming of business methods” 1. How to draft a business method patent application 1.1 How to grasp a statutory inventive idea 1.2 How to draft statutory claims 1.3 Claim strategy 1.4 Sufficient disclosure 1.5 Practical examples 2. How to prosecute a business method patent application 2.1 Statutory invention 2.2 Prior art database 2.3 Patentability 2.4 Problems 3. How to enforce a business method patent 3.1 Distributed transaction/processing 3.2 Patent infringement litigation in Japan 3.3 Claim interpretation 3.4 Licensing problem 3.5 Global unification or differentiation? 4. Future revisions of the Japanese patent law 4.1 Category of invention 4.2 Mode of working 4.3 Japanese translation of English PCT specification 4.4. IDS for available prior art

3 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.1 HOW TO GRASP A STATUTORY INVENTIVE IDEA ● § 2 /JAPANESE PATENT LAW: ● EXAMINATION GUIDELINES: NON-STATUTORY INVENTION STATUTORY INVENTION Statutory invention = Technical idea utilizing natural laws ● Man-made rule, mathematical algorithm per se ● Business method per se ● Claim specifying the way how SW cooperates with HW resources

4 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.1 HOW TO GRASP A STATUTORY INVENTIVE IDEA ● Mere flashes of idea / Business scheme is not patentable. ● Add technical supports to business scheme. Conception / Flashes of idea Statutory invention Technical supports: How to utilize HW resources ( PC, NW )

5 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.2 HOW TO DRAFT STATUTORY CLAIMS NON-STATUTORY INVENTIONS: ● Pure algorithm ● Pure business method CLAIM LANGUAGE: ● How to utilize H/W resources ● Breakdown of functions or utilization of H/W resources ● Mere reciation of H/W resources is not satisfactory EMPHASIS ON: ● Technical contribution ● Technical effects ● Technical application / field (utility) STATUTORY INVENTION: ● Algorithm-related invention ● Business method invention In terms of apparatus / method / computer program product

6 1.3 CLAIM STRATEGY 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION (1)USE COMBINATION + SUBCOMBINATION: ● Entire system + Subsystem ● Apparatus + Parts ● Method + Submethod (2)CONSIDER 3 TYPES OF CLAIM: ● Apparatus / System claim ● Method / Process claim ● Computer program product claim (3)CONSIDER VARIOUS APPLICATIONS: ● Draft claims in various fields to which the invention is applicable (4)USE MULTI CLAIM SYSTEM: ● More flexible than in other countries ● Use multi dependence to save cost ● Effective utilization of dependent claims ● “Further comprising”claim ● Combination of previous claims

7 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.3 CLAIM STRATEGY MULTI CLAIM SYSTEM IN JAPAN ● The number of independent claims is not limited. ● Replacement type claim: An apparatus wherein element A in claim 1 is replaced with element B. ● Combination type claim: An apparatus comprising element A as claimed in claim 1 and element B as claimed in claim 2.

8 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.4 SUFFICIENT DISCLOSURE (1)SPECIFY: ● Field of technology ( Industrial applicability, utility) (2)DESCRIBE: ● Background of the invention ● Objects of the invention ● Resulted operations and technical effects ● “Problem-solution approach” in Japan (3)EXPLAIN: ● The invention in full, clear, concise and exact terms ● Embodiments satisfying enablement ● Best mode ● The relationship between software and hardware ● With effective reference to the drawings ● With effective use of detailed flowcharts and pseudo code listings instead of program listings / microfiche (4)APPEND: ● Glossary of technical jargons, terms, abbreviations symbols, rules, functions, commands, task blocks and so on (5)NOT RECOMMENDED : ● Program listings / microfiche

9 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.5 PRACTICAL EXAMPLES - Combination of advertisement information with map information ● JP 2,756,483 ( June 13, 1998 ) “Method of supplying advertisement and method of registering advertisement”

10 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.5 PRACTICAL EXAMPLES - Prepaid card type charging system utilizing charging server and authentication server - Licensing offer unsuccessful. Preliminary injunction filed, but denied, because of narrow scope of claim ● JP 2,939,723 ( June 18, 1999 ) “Time-based charging system for internet ” PC MODEM Net Work PC MODEM Terminal Server Authentication Server Authentication Data base Charging Server PasswordThe Number of Connections

11 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.5 PRACTICAL EXAMPLES - The system enables a creditor to receive automatic notice of settlement of money transfer by debtors(payers) by means of virtual accounts as meta accounts assigned to payers. - Licensing arrangements - Three opposition cases field ● JP 3,029,421 ( February 4, 2000 ) “Money transfer processing system ” Transfer Receiving Process Meta Account Searched ? Add Meta Account Number And/Or Meta Account Related Information To Account/Receivable Ledger Convert Meta Account Number Into Specified Account Number Regular A/R Ledger Processing A/R Ledger EB Service Feedback A/R Ledger Feedback YES NO S302 S304 S306 S308 S312 S314 Claim1: A transfer system in a bank system for transferring money using a plurality of related (meta) accounts to payers,comprising: a unit for performing a receiving process on a specified account to collectively receive money transferred into a plurality of related accounts; an output unit for outputting transfer information for the related account by adding to it account related information about an account related to a payer and/or a number specifying the related account; and a unit storing the outputted transfer information as the transfer information about the specified account.

12 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.5 PRACTICAL EXAMPLES ● JP 2,141,163 ( December 3, 1999 ) “Electronic money system ” - Citibank patent - Many of Japanese banks were triggered to be more involved in patent protection first time. - USP 5,453,601 ● JP 2,874,341 ( January 14, 1999 ) “Money transfer system ” - Mondex Money - USP 5,623,547 ; USP 5,778,067 - EP 479,982

13 1. HOW TO DRAFT A BUSINESS METHOD PATENT APPLICATION 1.5 PRACTICAL EXAMPLES ● PENDING APPLICATIONS - Hub and spoke financial service configuration / Signature Financial Group Inc. - Amazon’s one click ordering system - Buyer driven conditional purchase offers ( Reverse auction ) ● BAD EXAMPLE ● JP 2,804,933 ( July 24, 1998 ) “Automatic Cafe” Claim : An automatic café characterized in that a customer visiting the café inserts coins( ⑧ ) into an automatic tableware rental machine( ① ) to rent tableware( ⑦ ), food/beverage is dispensed into the tableware by a dispenser( ④ ), and the customer carries the tableware( ⑦ ) with food/beverage to table (⑥) to eat/drink it

14 2.1. STATUTORY INVENTION 2. HOW TO PROSECUTE A BUSINESS METHOD PATENT APPLICATION ● Emphasis on technical nature of the invention ● Drafting claims by following the Examination Guidelines - How to cooperate SW with HW resources ● Claim should be supported by disclosure. ● Clearly show utility of the invention - Field of the invention

15 2.2. PRIOR ART DATABASE 2. HOW TO PROSECUTE A BUSINESS METHOD PATENT APPLICATION ● Insufficient prior art database in the field of SW and business method ● Conduct prior art search to evaluate the invention ● Volunteer to disclose prior art references located ● Educate and cooperate with examiner to expedite examination and hopefully guide examiner to the invention

16 2.3 PATENTABILITY 2. HOW TO PROSECUTE A BUSINESS METHOD PATENT APPLICATION ● Inventive step is more important than statutory subject matter issue. ● Inventive step in the case of new business method ○○ New Known ? NewKnown × Computer Processing Business method Inventive step

17 2. HOW TO PROSECUTE A BUSINESS METHOD PATENT APPLICATION 2.4. PROBLEMS ● Less number of patent attorneys and examiners in business fields ● Longer pendency ● Solution - More detailed disclosure - Better comparison of the invention with prior art

18 3. HOW TO ENFORCE A BUSINESS METHOD PATENT 3.1. DISTRIBUTED TRANSACTION / PROCESSING ● System claim comprising server, network and user terminal: ● Joint Tort Issue Server, network and user terminal are partly involved in the entire infringement act. ● Cross border issue ● Enforceable claims directed to each part of the entire system Network Server User terminal

19 3. HOW TO ENFORCE A BUSINESS METHOD PATENT 3.2. PATENT INFRINGEMENT LITIGATION IN JAPAN ● Expedited court proceedings - 1-2 years - Exchange of information between JPO and courts ● Partial shift of burden of proof to defendant - The defendant should show evidences of Non-infringement at an earlier stage. ● Trade secret protection - No protective order - Only in-camera system ● Amount of damage - Reasonable royalty - Lost profit - (Amount of product by defendant) ×(Unit profit by plaintiff) - Hypothetically licensed royalty ● Preliminary injunction - More frequently affirmed than in the past - Powerful to plaintiff. Serious influence to defendant. ● Validity issue can be reviewed by a court since April, 2000.

20 3. HOW TO ENFORCE A BUSINESS METHOD PATENT 3.3. CLAIM INTERPRETATION ● Doctrine of equivalents (1) Doctrine of equivalents is applicable when the difference between the patented invention and the accused device is not a substantial part of the patented invention. (2) Interchangeability (3) Ease of interchange at the time of manufacturing the accused device (4) Exclusion of the publicly know prior art or its obvious version from the scope of the claim. (5) File wrapper estoppel confirmed. ● File wrapper estoppel ● Functional claim - Functional means/step is not limited to those disclosed in the specification, if the term is clear by itself. - If the term is not clear, the term may be construed by referring to the specification. - No §112 paragraph 6 requirement

21 3. HOW TO ENFORCE A BUSINESS METHOD PATENT 3.4. LICENSING PROBLEM ● How to evaluate royalty - The number of products to be manufactured - The number of services enjoyed by implementing the invention

22 3. HOW TO ENFORCE A BUSINESS METHOD PATENT 3.5. GLOBAL UNIFICATION OR DIFFERENTIATION ? ● Different patent practices among various countries - Examination can be harmonized. - Claim interpretation can be hardly harmonized. - Court judgment can be hardly harmonized. ● It would be easier to make international cyber law to harmonize international issues on cross border patent enforcement. It would be difficult or almost impossible to change traditional national enforcement practices or court system.

23 4. FUTURE REVISIONS OF THE JAPANESE PATENT LAW 4.1. CATEGORY OF INVENTION ● Two categories - Article (apparatus, system, product) - Method / Process ● Article covers even an intangible product such as program without storage medium. Signal per se is not patentable.

24 4. FUTURE REVISIONS OF THE JAPANESE PATENT LAW 4.2. MODE OF WORKING Current definition of working: - Product : “manufacturing”, “using”, “assigning”, “leasing”, “importing”, “offering” for assignment or “lease” the product - Method : “using” the method - Manufacturing method : “using” the method, using, assigning, “leasing”, “importing” or “offering” for assignment or “lease” the product manufactured by the method Future definition may exclude “assign” and “lease” and add : “Supply” (including “assign” and “lease” and “offer” via information network).

25 4. FUTURE REVISIONS OF THE JAPANESE PATENT LAW 4.3. JAPANESE TRANSLATION OF ENGLISH PCT SPECIFICATION ● Entry into Japan should be within 30 months from the first filing date (priority date). ● Two-month grace period for submitting Japanese translation after 30 months.

26 4. FUTURE REVISIONS OF THE JAPANESE PATENT LAW 4.4. IDS FOR AVAILABLE PRIOR ART ● Encouraged to submit IDS ● Available prior art ● For better development of prior art database

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