How to obtain a business model patent - A patent attorney explains everything

The source contains many specific examples of software-related inventions that fall under the category of "inventions." Let me introduce some of them.

[Case applicable to "invention"]

• Product sales prediction program

  • Summary of Claim: Use of computers to predict sales of various products. It is provided with a storage means for recording prediction date input, past sales performance data, fluctuation condition data, and correction rules, and includes means for calculating a first predicted value from the past data average, correcting the first predicted value based on the fluctuation condition data and the correction rule, and determining a second predicted value.
  • Summary of detailed description of the invention: A system for obtaining predicted sales values necessary for ordering products at a retail store. The purpose is to obtain constant prediction results in a short time without relying on experience for the sales of products whose demand fluctuates greatly depending on the day of the week, the weather, the situation of competing stores, events, etc. The first predicted value is calculated based on the sales data, the fluctuation condition data, and the correction rule, and the first predicted value is corrected using the correction rule according to the fluctuation condition to determine the final predicted value.
  • Conclusion: It falls under "invention".
  • Explanation: It can be determined that the calculation or processing of specific information according to the purpose of use, such as predicting sales performance based on various fluctuation conditions and correction rules, is realized by concrete means in which software and hardware resources cooperate, such as multiple storage means and means for controlling data reading and selection.
  • Explanation: The reason why this case was determined to be an "invention" is that it is not simply a business method of "predicting sales," but is configured as a system in which a computer performs specific calculation processing based on specific information such as past data, fluctuation conditions, and correction rules.

• Point service method

  • Summary of claim: A service method that awards points according to the amount of money purchased at an online store. A method comprising the steps of inputting the amount of points to be gifted and the name of the gift recipient into a server, the server obtaining an e-mail address based on the name of the gift recipient, adding the points to the gift recipient's points, and notifying the recipient using the gift recipient's e-mail address.
  • Summary of detailed description of the invention: Point service method used in mail order sales. A database containing a customer list (customer name, accumulated points, e-mail address) is set up on the server of the store on the Internet to manage points. Customers earn points as they purchase products. When gifting points to another customer, the server is notified of the recipient's name and the gift points, and the server searches and adds up the customer list, and notifies the customer by e-mail.
  • Conclusion: It falls under "invention".
  • Explanation: It can be determined that the calculation or processing of information specific to the purpose of use, such as receiving notification of gift points and gift recipients from customers via the Internet, adding up the points of gift recipients registered in the customer list, and notifying them using registered e-mail addresses, is achieved through a specific procedure in which software and hardware resources cooperate, such as a series of information processing by a server equipped with customer list storage means.
  • Explanation: Although the point service itself is a business idea, the point at which it was recognized as an "invention" was that it was identified as a specific series of information processing (customer list management, point addition, notification) carried out by servers and computers working together.

• Unmanned vehicle dispatch system and dispatch method

  • Summary of claim: A system consisting of a dispatch server, a mobile terminal, and an unmanned vehicle. The mobile device sends the user ID and ride location. The dispatch server acquires the facial image corresponding to the user ID, identifies unmanned vehicles that can be dispatched, and sends the dispatch location and facial image. An unmanned vehicle automatically travels to the dispatch location, uses facial recognition processing to identify the person requesting a ride, and permits use.
  • Summary of detailed description of the invention: Unmanned vehicle service within the premises of an amusement park, theme park, etc. Based on a dispatch request from a mobile terminal, the dispatch server identifies and directs unmanned vehicles that can be dispatched. After the driverless vehicle arrives, it uses facial recognition to confirm the user and prompts the user to board the vehicle.
  • Conclusion: It falls under "invention".
  • Explanation: It can be determined that specific calculations or processing according to the purpose of dispatching unmanned vehicles, such as the vehicle dispatch server acquiring and transmitting a facial image and the unmanned vehicle performing facial recognition processing, are realized by specific means or specific procedures in which software and hardware resources cooperate, such as a system consisting of the vehicle dispatch server, the unmanned vehicle, and the mobile terminal.
  • Explanation: It is important that the idea of a ride-hailing service using unmanned vehicles is specified in detail as processing on a concrete computer system, such as servers and terminals, communication between vehicles, and facial recognition.

As can be seen from these examples, an important criterion for determining whether an invention falls under the category of "invention" is whether it is not just an explanation of business mechanisms and rules, but is constructed as a concrete technical means of processing information for a specific purpose by linking hardware resources and software such as computers, networks, various data, and sensors.

On the other hand, simple game rules and abstract programs with unclear specific technical relationships are cited as examples that do not fall under the category of "inventions."

• Game method (Example 6)
  • Explanation: Although there is a part that utilizes a technical means called a chat system, as a whole it is just a method that utilizes only an artificial arrangement in which shogi is played by taking turns with players in remote locations, so it does not fall under the category of "invention."
• Secondary accident prevention program (examples that do not fall under (ii-2) above)
  • Explanation: Only "determining whether an accident has occurred based on information about multiple vehicles" is specified, and even considering the description and drawings as well as the common general knowledge at the time of filing, the technical correlation is unclear, so it does not fall under the invention.
• Computer (sales forecast example 2)
  • Explanation: Regarding the information processing of predicting sales based on past data, it cannot be said that specific means or procedures for realizing specific calculations or processing according to the purpose of use are described. Since information processing by software is not concretely realized using hardware resources, it does not fall under the category of "invention."

These cases show that even if something is business-related, if it cannot be concretely translated into technical means, it cannot be recognized as an "invention."

2. Patent requirements that business model patents (software-related inventions) should satisfy

Even if it is determined that the invention falls under the category of "invention," there are still several requirements that must be met in order to be registered as a patent. The main patent requirements include novelty, inventive step, and appropriate description of the specification and claims (description requirements).

2.1. Novelty/inventive step

The invention related to your business model must be not already known in the world or described in published documents at the time of filing (novelty) and cannot be easily figured out by a person skilled in the art based on prior art (inventive step). The novelty and inventive step of software-related inventions are determined according to the examination standards of the Japan Patent Office.

I would like to introduce some points that are especially important for inventions related to business models.

• General effects associated with systemization

  • Effects such as ``faster processing,'' ``able to process large amounts of data,'' ``less errors,'' and ``uniform results'' that can be obtained by systemizing with a computer are often natural effects of systemizing, and are usually not considered to be significant effects that cannot be predicted based on the state of the art at the time of filing. These general effects alone tend not to constitute an inventive step.

• Systematization of human tasks and business methods

  • It is often judged that simply implementing a method for performing tasks or business that has previously been performed by humans using a computer system is an exercise of the normal creative ability of a person skilled in the art, as long as it is possible to do so through daily work using normal system analysis and system design methods.
  • For example, systemizing orders from being received by fax or telephone to being placed on an Internet homepage, systemizing purchase and sale information published in a magazine to be posted on an Internet homepage, systemizing a server so that a server automatically sets the timer for a rice cooker based on the time a family member returns home, which had previously been done manually, and reproducing a known phenomenon in a computer virtual space. These examples suggest that unless there are special technical difficulties in systematization itself, the inventive step is likely to be denied.

• Elements in the direction of affirming inventive step

  • However, even if it is a general effect or systemization as described above, if it has a remarkable effect that exceeds the range expected from the state of the art at the time of filing compared to the cited invention, it becomes an element that works in the direction of affirming inventive step. For example, attempting to apply computer technology procedures or means applied in one specific field to another specific field is the exercise of the ordinary creative ability of a person skilled in the art, but if the advantageous effects obtained by setting predetermined technical conditions for the application are more remarkable than expected, inventive step may be presumed.
  • Also, an inventive step may be recognized if an inhibiting factor that is not shown in the prior art but that prevents systemization is overcome.
  • For software-related inventions related to methods of doing business, commercial success due to the business method itself or similar facts may be taken into account as facts useful for positively inferring the existence of an inventive step. However, like other inventions, commercial success alone does not determine inventive step.

Novelty and inventive step are determined based on comparison with prior art, so it is very important to perform a thorough prior art search before filing.

2.2. Description requirements (Article 36)

In order to obtain a patent, the specification (detailed description of the invention) and claims must meet the requirements stipulated in Article 36 of the Patent Law. In particular, the important description requirements related to business model patents (software-related inventions) are as follows.

• Enabling requirements (Article 36, Paragraph 4, Item 1)

  • The detailed description of the invention must be clear and sufficient to enable a person skilled in the art to carry out the invention. In the case of software-related inventions, this means that the mechanism by which information processing by software is concretely realized using hardware resources must be explained so that a person skilled in the art can understand and reproduce it.
  • In the source example, it is said that if a mathematical evaluation method using game theory to predict exchange rate fluctuations and the software that implements it cannot be understood by a person skilled in the art even based on the common general knowledge at the time of filing, or the claimed invention cannot be carried out.
  • Also, in the case of biological inventions, there are cases where the "specific function" (a function that can be assumed to have a technically meaningful specific use) of a protein encoded by a polynucleotide is unclear, cases where full-length DNA is obtained from a DNA fragment and the function or physiological activity of the corresponding protein cannot be predicted, cases where it is not recognized that a single SNP can be used solely by the description of using it for forensic identification. Cases have been cited in which the enablement requirement is violated because it is unclear from the detailed description of the invention that it can be used. In addition, there are cases in which the operability requirement is violated for short peptide variants because it cannot be assumed that they maintain their functionality in the absence of experimental data, and there are also cases in which the operability requirement is violated because the structure of the target compound cannot be understood or identified simply by abstract definitions such as in silico screening or pharmacophores, and trial and error beyond those skilled in the art is required.
  • These examples suggest that even in business model patents, it is extremely important to not only describe abstract ideas and functions, but also provide detailed and comprehensive explanations, including drawings, of the specific technical means and mechanisms for realizing themin order to satisfy the enablement requirement.

• Support requirements (Article 36, Paragraph 6, Item 1)

  • The invention described in the claims must be supported by the content (embodiments, etc.) described in the detailed description of the invention. In other words, the scope of the claim does not exceed the scope that a person skilled in the art could understand and derive from the content disclosed in the specification.
  • In source cases, the question is whether the content stated in the detailed description of the invention can be extended or generalized to the scope of the claimed invention. For example, cases have been cited in which support requirements are violated because the disclosed content cannot be extended to the scope of the claim due to insufficient description in the specification, such as when there is only a description that supports the use of a few specific compounds.
  • It is possible to refute the rejection reason for violation of support requirements using a written opinion or a certificate of experimental results. By submitting a certificate of experimental results, you can make up for any deficiencies in the description and demonstrate that the invention can be carried out to the extent of the claimed invention.
  • In a business model patent, all components and steps of the system or method specified in the claim must be supported by descriptions of specific embodiments and drawings in the specification.

• Clarity requirement (Article 36, Paragraph 6, Item 2)

  • The claims must clearly state the invention. This allows third parties to clearly understand the scope of your rights. Determination of clarity requirements for software-related inventions is made in accordance with examination standards.
  • Examples of cases in which an invention is not clear include cases where it is unclear how to evaluate certain components (such as preconditions or individual behavior patterns), or cases where technical correlations (correlations used to make informed decisions) are unclear. In addition, cases where a compound is identified only by abstract definitions such as in silico screening or pharmacophores violate clarity requirements because it is difficult to understand the technical content.
  • In a business model patent, the meaning of the terms stated in the claim must be specific and clear enough to be understood by a person skilled in the art, taking into account the description and drawings as well as the common general knowledge at the time of filing.