Examples of examinations on inventions related to Business Methods
Japanese Patent Office, Fourth Patent Examination Department
April, 2003

Translated by:
Hideo FURUTANI, Japanese Patent Attorney
Furutani Patent Office
TEK No. 2 Building
1-23-20, Esaka-cho, Suita-city
Osaka, 564-0062 JAPANfuruatni@furutani.co.jp
http://www.furutani.co.jp(Note) Translations contained herein are not authorized by JPO.

Example 1: Application document receipt processing system (An example
case of determining according to Article 29(1) of Japanese Patent Law)
[Claim 1] (A social system not deemed to be patentable)
An application document receipt processing system having an agent that
performs preparation and submission of application documents, and a public
institution that receives the submitted documents, characterized in thatthe agent performs the process of preparing the application documents byfilling in forms corresponding to the application documents with necessary
items such as the name and address of the applicant and sending theapplication documents to the public institution through the postal service orcommunication lines, andthe public institution performs the process of checking whether or notomission is present in the submitted documents, providing a receipt serial
number in case no omission is present, and sending the receipt serial number tothe agent, the source of the application, through the postal service orcommunication lines.
[Explanation]
This claim describes, in relation to an “application document receipt
processing system” having an agent that performs preparation and submissionof application documents, and a public institution that receives the submitted
documents, nothing more than the definition of details of the handling
operations performed by the agent, preparing the application documents byfilling in forms corresponding to the application documents with necessary
items such as the name and address of the applicant and sending theapplication documents to the public institution through the postal service orcommunication lines, and the definition of details of the handling operations
performed by the official agent, checking whether or not omission is present in
the submitted documents, providing a receipt serial number in case noomission is present, and sending the receipt serial number to the agent, thesource of the application, through the postal service or communication lines.
This claim does not describe any technical items to be specified.

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In view of the above, the invention understood from the items describedin this claim is not the so-called “computer system” but nothing more than an
artificial arrangement, or social “setup” (social system). Therefore, theinvention as a whole is not a creation of a technical idea utilizing a law ofnature.
Therefore, this invention is not an “invention” as defined in Article 2 of
the Patent Law, and does not fulfill the requirements specified in Article 29(1)of the Patent Law.
[References]
・Examination Guidelines for patents and utility models
Part II, Chapter 1, “Inventions having industrial applicability” 1.1(4)・”Examples of business-related unpatentable inventions”
Example 1-1[Claim 2] (An example that is still a social system and not deemed to bepatentable in spite of using computers)
An application document receipt processing system having an agent that
performs preparation and submission of application documents, and a public
institution that receives the submitted documents, characterized in thatthe agent uses computers to perform the process of preparing theapplication documents by filling in forms corresponding to the application
documents with necessary items such as the name and address of the applicant
and sending the application documents to the public institution throughcommunication lines,
the public institution uses computers to perform the process of checking
whether or not an omission is present in the submitted documents, providing a
receipt serial number in case no omission is present, and sending the receipt
serial number to the agent, the source of the application, through thecommunication lines.
[Explanation]

3

This claim describes, in relation to an “application document receipt
processing system” having an agent that performs as deputy preparation andsubmission of application documents, and a public institution that receives thesubmitted documents, the definition of details of the handling operations
performed by the agent, using computers to prepare the application documentsby filling in forms corresponding to the application documents with necessary
items such as the name and address of the applicant and sending theapplication documents to the public institution through the communicationlines, and the definition of details of the handling operations performed by the
public institution, using computers to check whether or not an omission ispresent in the submitted documents, providing a receipt serial number in caseno omission is present, and sending the receipt serial number to the agent, thesource of the application, through the communication lines. However, thecontents understood from the above description are nothing more thanperforming various handling operations using the computer as a tool.
In view of the above, the invention understood from the items describedin this claim is not the so-called “computer system” but nothing more than an
artificial arrangement, or social “setup” (social system). Therefore, theinvention as a whole is not a creation of a technical idea utilizing a law ofnature.
Therefore, this invention is not an “invention” as defined in Article 2 of
the Patent Law, and does not fulfill the requirements specified in Article 29(1)of the Patent Law.
[References]
・Examination guidelines for inventions and utility models
Part II, Chapter 1, “Inventions having industrial applicability” 1.1(4)・”Examples of business-related unpatentable inventions”
Example 1-1, Example 1-2[Claim 3] (An example not deemed to be patentable, in spite of being a4

computer system, because the information processing using software is notconcretely realized using hardware resource)
An application document receipt processing system having an agent
terminal installed on the side of an agent that performs preparation andsubmission of application documents, and a public institution computer
installed in the public institution that receives the submitted documents and isconnected to the agent terminal through a communication network,
characterized in that the public institution computer comprises:
means for receiving application document data coming sent from theagent terminal;means for checking whether or not an omission of data is present in thereceived application document data; andmeans for providing a receipt serial number in case no omission is present,
and sending the receipt serial number to the agent terminal through thecommunication network.
[Explanation]
This claim describes “an agent terminal installed on the side of an agent
that performs as deputy preparation and submission of application documents,
and a public institution computer installed in the public institution that receives
the submitted documents and is connected to the agent terminal through acommunication network” and this invention is understood to be a so-called“computer system” having plural computers and a computer network.
It is true that this claim states explicitly that the “public institution
computer” is provided with functional means: ‘a means for receiving
application document data coming sent from the agent terminal,’ ‘a means forchecking whether or not an omission of data is present in the received
application document data,’ and ‘a means for providing a receipt serial number
in case no omission is present, and sending the receipt serial number to theagent terminal through the communication network.’ However, the explicit
statement of every functional means remains within the scope of explicitly
stating the operational functions to be fulfilled with those means but does notstate explicitly how those means are technical means realized concretely to5fulfill the operational functions using hardware resource of the computer. In
effect, while the claim explicitly states the operational functions to be fulfilledwith the “public institution computer”, no explicit statement is made how the
information processing is concretely realized by means of software executed on
the public institution computer to fulfill the operational functions and how the
hardware resource of the computer is used to do so. The rest of thedescription in this claim does not either state explicitly that the information
processing by means of software is what is concretely realized using the
hardware resources of the computer.
In other words, this claim does not make any explicit statement that the
information processing by means of software is concretely realized as acomputer system using hardware resources.
Therefore, the invention as understood from the items described in thisclaim cannot be deemed to be a creation of a technical idea utilizing a law ofnature.
Therefore, this invention is not an “invention” as defined in Article 2 of
the Patent Law, and does not fulfill the requirements specified in Article 29(1)of the Patent Law.
[References]
・Examination guidelines for inventions and utility models
Part VII, Chapter 1, “Computer software related inventions” 2.2
・”Examples of business-related unpatentable inventions”
Example 1-3[Claim 4] (An example deemed to be patentable)
An application document receipt processing system having an agent
terminal installed on the side of an agent that performs preparation andsubmission of application documents, and a public institution computer

6installed in the public institution that receives the submitted documents and isconnected to the agent terminal through a communication network,
characterized in that the public institution computer comprises:
application document storing means for storing submitted application
document data, an agent ID, and a receipt serial number;means for writing in succession the application document data and theagent ID sent from the agent terminal onto the application document storingmeans;
means for reading in succession the application document data and theagent ID out of the application document storing means and for detecting anomission in writing the application contents according to whether or not a
NULL code is included in the application document data; andmeans, in case no omission is detected, for providing a receipt serial
number and storing it in the application document storing means, and forsending the receipt serial number to the agent terminal on the basis of the agent
ID through the communication network.
[Explanation]
This claim describes “an application document receipt processing systemhaving an agent terminal installed on the side of an agent that performs
preparation and submission of application documents, and a public institution
computer installed in the public institution that receives the submitted
documents and is connected to the agent terminal through a communication
network” and this invention is understood to be a so-called “computer system”
having plural computers and a computer network.
This claim explicitly states that the public institution computer isprovided with functional means: ‘an application document storing means forstoring submitted application document data, an agent ID, and a receipt serial
number,’ ‘a means for writing in succession the application document data andthe agent ID sent from the agent terminal onto the application document
storing means,’ ‘a means for reading in succession the application document
data and the agent ID out of the application document storing means and for
detecting omission in writing the application contents according to whether or
not a NULL code is included in the application document data,’ and ‘a means,7

in case no omission is detected, for providing a receipt serial number andstoring in the application document storing means, and for sending the receipt
serial number to the agent terminal on the basis of the agent ID through thecommunication network.’ This description explicitly states that the various
functional means provided in the public institution’s computer for performing
the application document receipt handling process are technical means realized
concretely by arranging that the data such as the “application document data”
are written and stored in succession in the application document storing means
which is a hardware resource of the computer, the stored data are read in
succession and omission in writing the application contents is detectedaccording to whether or not a NULL code is included in the application
document data. This claim explicitly describes that information processing bymeans of software is what is concretely realized using hardware resource of thecomputer.
In view of the above, the invention understood on the basis of the items
described in this claim is a creation of a technical idea utilizing a law of nature.
[Reference]・Examination guidelines for inventions and utility models
Part VII, Chapter 1, “Computer software related inventions”

8

Example 2:(Translation of example 2 is omitted.)9

Example 3: Advertisement mediating system (An example illustrating theintention of Article 36(6)(ii) and Article 29(1) of the Patent Law)
[Claim 1] (An example, [although whether it is a social system or a computer
system is not clear,] not deemed to be patentable)
An advertisement mediating system mediating between an advertisement
client and an advertisement agent, comprising:idea registering function for registering the idea information of theadvertisement agent;idea searching function for searching for the registered idea information;
andproviding function using the idea searching function for searching for
idea information corresponding to the needs information of the advertisement
client, providing the idea information to the advertisement client, andproviding the needs information to the advertisement agent.
[Claim 2] (An example explicitly stated to be a computer system and deemed
to be patentable)
An advertisement mediating system in which client-side computersseparately owned by plural advertisement clients and agent-side computersseparately owned by plural advertisement agents are separately connected toan advertisement mediating computer through a communication network,
characterized in that the advertisement mediating computer comprises:
idea information storing means for storing the advertisement agent’s idea
information as related to an agent ID and idea classifying data for indicating,with bit positions, at least one target commodity category;idea information registering means for registering the agent ID, the idea
information, and the idea classifying data sent from the agent-side computer at
the idea information registering means;means for receiving, from the client-side computer, mediation request data
including a client ID, needs information, and needs classifying data of the sameformat type as the idea classifying data;
idea extracting means for searching and extracting acceptable idea by
performing, upon receiving the mediation request data, on all the idea

10

information stored in the idea information storing means, a series of processes
including:
process of reading the agent ID, the idea information, and the ideaclassifying data from the idea information storing means and storing them in an
operational storing means;process of implementing an AND operation of the idea classifying data andthe needs classifying data;process of implementing a EXCLUSIVE-OR operation of the calculated
results of the logical multiplication and the needs classifying data; andunacceptable idea deleting process of deleting, from the operational storingmeans, the agent ID, the idea information, and the idea classifying data as
unacceptable in the case that the calculation of the exclusive logical addition
results in other than zero; andidea providing means for sending, when the process with the idea
extracting means is over, the idea information stored in the operational storingmeans to the client-side computer along with sending the needs information to
the agent-side computer corresponding to the agent ID stored in the operational
storing means.
[Explanation]
・Claim 1(Decision with Article 36(6)(ii) of the Patent Law)
This claim explicitly states, as functions to be provided to the“advertisement mediating system” mediating between the ‘advertisement
client’ and the ‘advertisement agent,’ the ‘idea registering function forregistering the idea information of the advertisement agent’, ‘the idea searching
function for searching the registered idea information’, and the ‘providing
function using the idea searching function for searching the idea information
corresponding to the needs information of the advertisement client, providing
the idea information to the advertisement client according to the search result,and providing the needs information to the advertisement agent’. However, it
is not clear whether the above description which explicitly states the functions
is intended to specify the operational function (performed by humans) or theprocessing function performed by the computer.

11

Therefore, the invention related to this claim is not clear and does not
fulfill the requirements specified in Article 36(6)(ii) of the Patent Law.
(Decision about Article 29(1))
If the description of the respective functions in this claim is assumed to
specify the operational function performed by humans, the invention
understood on the basis of the items described in this claim is not the so-called“computer system,” but nothing more than an artificial arrangement or a social“setup” (social system), and as a whole is not a creation of a technical idea
utilizing a law of nature.
If the description of the respective functions in this claim is to specify theprocessing function performed by computers, then the description of any
functional means provided in the ‘computer system’ is not more than specifying
the operational function to be fulfilled with those means, and does not specify
how the technical means is realized concretely using the hardware resource ofthe computer. In other words, since no description of information processing
by means of software as a computer system realized concretely using the
hardware resource of the computer is present in this claim, the invention
understood on the basis of the items described in this claim is deemed not to bea creation of a technical idea utilizing a law of nature.
Therefore, in any case, since this invention is not an “invention” asspecified in Article 2 of the Patent Law, it does not fulfill the requirements
specified in Article 29(1) of the Patent Law.
・Claim 2
This claim describes an “advertisement mediating system in whichclient-side computers separately owned by plural advertisement clients andagent-side computers separately owned by plural advertisement agents are
separately connected to an advertisement mediating computer through acommunication network”. The invention is understood to be the so-called“computer system” as a network constituted with plural computers.

12This claim specifies that the “advertisement mediating computer”
comprises: ‘an idea information storing means for storing the advertisement
agent’s idea information as related to idea classifying data for indicating, withbit positions, the agent ID and at least target commodity category’; ‘an idea
information registering means for registering the agent ID, the idea information,and the idea classifying data sent from the agent-side computer at the idea
information registering means’; ‘a means for receiving, from the client-side
computer, the client ID, the needs information, and mediation request data
including needs classifying data of the same format type as the idea classifying
data’; ‘an idea extracting means for searching and extracting acceptable idea by
performing, upon receiving the mediation request data, to all the idea
information stored in the idea information storing means, a series of processes
including: a process of reading the agent ID, the idea information, and the ideaclassifying data from the idea information storing means and storing them in an
operational storing means; a process of calculating a logical multiplication of
the idea classifying data and the needs classifying data; a process of calculating
an exclusive logical addition of the calculated results of the logicalmultiplication and the needs classifying data; and an unacceptable idea deleting
process of deleting, from the operational storing means, the agent ID, the idea
information, and the idea classifying data as unacceptable in the case that thecalculation of the exclusive logical addition results in other than zero; and an
idea providing means for sending, when the process with the idea extracting
means is over, the idea information stored in the operational storing means tothe client-side computer along with sending the needs information to theagent-side computer corresponding to the agent ID stored in the operational
storing means.
The above description specifies that the respective functional means
provided to the advertisement mediating computer for performing theadvertisement idea mediating process are technical means concretely realized
by the processes of writing and storing in succession, in the idea information
storing means which is a hardware resource of the computer, the “ideainformation”, the “agent ID”, and the “idea classifying data”, and searchingand extracting the idea information matching the advertisement client’s needs
by reading the stored data in succession and performing a logical calculation
process on the ‘idea classifying data’ and the ‘needs classifying data’.

13

In this claim the information processing by means of software isconcretely realized utilizing hardware resources of the computer.
Therefore, the invention understood on the basis of the items described inthis claim is a creation of a technical idea utilizing a law of nature.
In this way, since the information processing by means of software is
specified in claim 2 as what is concretely realized using the hardware resourcesof the computer, the failure of claim 1 to fulfill the requirements of definitenessand statutory subject matter is remedied.
[References]
・Examination guidelines for inventions and utility models
Part II, Chapter 1, “Inventions having industrial applicability” 1.1(4)Part VII, Chapter 1, “Computer software related inventions” 2.2.2(1)・”Examples of business-related unpatentable inventions”
Example 1-1, Example 1-2, Example 1-3,

14

Example 4:(Translation of example 4 is omitted.)15

Example 5: System for selling children’s bicycles (An example of determining
the inventive step according to Article 29(2))[Claim 1] (Example lacking inventive step)
A system for selling children’s bicycles to provide commodity information
on children’s bicycles through the Internet, comprising:means for entering information about what a user desires including at least
color and cartoon character desired by users,
means for entering physical information about user such as the height ofusers,
means for searching commodity information according to the information
about what the user desires and determining the size information of thecommodity according to the physical information about user,means for creating made-to-order information according to the information
about what the user desires and physical information about user in case thecommodity choosing means cannot determine the commodity, andmeans for receiving an order for the commodity chosen with thecommodity choosing means or an order for the commodity according to themade-to-order information created with the made-to-order information creatingmeans.
[Detailed Description of the Invention](Omitted in original)
FIG. 1Make

Commodity code

Wheel
size

Frame Suitabletype
heightColor

Character

A bike C

AM011818

A

100 - 130

Red, BlueM

A bike C

AM012020A

110 - 140

Red, BlueM

A bike C

AM012222A

120 - 150

Red, BlueM

A bike C

BN021818

B

110 - 130

Orange,PurpleN

A bike C

BN022020

B

120 - 140

Orange,PurpleN

A bike C

BN022222B

130 - 150

Orange,N

16

Purple
…

…

…

…

…

…

…

FIG. 2
Step1: Enter info about what user desires such as color and character. Go to
Step 2.
Step 2: Enter physical info abut user such as height. Go to Step 3.
Step 3: Search commodity info according to info about what user desires. Go
to Step 4.
Step 4: Can a commodity be found? If yes, go to Step 5. If no, go to Step 7.
Step 5: Determine size info according to physical info. Go to Step 6.
Step 6: Can suitable size be found? If yes, go to Step 8. If no, go to Step 7.
Step 7: Create made-to-order info. Go to Step 8.
Step 8: Receive order for commodity.
[Reference]
The following features are described in the reference:
・A commodity selling system through the Internet to provide commodity
information on clothing to a consumer’s computer.
・A user interface is employed for the user to choose commodity information on
clothing and to enter information about what the user desires such as color anddesign in order to select the desired commodity, and physical information
about user such as height for deciding the size of the commodity.
・The commodity selling system searches the commodity information database(see FIG. 1) using the information about what the user desires and physicalinformation about user sent from the consumer’s computer as search keys and,if commodity that conforms to the conditions is present, sends the information
to the consumer’s computer.
・In case no commodity is present that matches the conditions, the commodity
selling system creates made-to-order commodity information matching theconditions and sends the information to the consumer’s computer.

17

・The consumer’s computer employs a user interface to output to the display
any commodity information received from the commodity selling system andto give order instructions for purchasing the commodity.
FIG. 1
Commodity Size Design Suitable height Color
SweaterS

V-neck 140 – 150

Red, Navy blue

SweaterM

V-neck 150 – 160

Pink, Light navy blue

SweaterL

V-neck 160 – 170

Dark red, Dark navy blue

Sweater

S

Turtle130 – 155

Dark orange, Dark purple

Sweater

M

Turtle150 – 175

Orange, Purple

Sweater

L

Turtle170 – 185

Light orange, Light purple

…

…

…

…

…

[Explanation]
When the invention related to Claim 1 is compared with the invention
described in the reference, they are the same with respect to:“A selling system for providing commodity information through theInternet, comprising:means for entering information about what user desires including at least
color users desire,means for entering physical information about user such as the height ofusers,
means for searching commodity information according to the information
about what user desires and determining the size information of the commodity
according to the physical information about user,means for creating made-to-order information according to theinformation about what user desires and physical information about user incase the commodity choosing means cannot determine the commodity, andmeans for receiving an order for the commodity chosen with thecommodity choosing means or an order for the commodity according to themade-to-order information created with the made-to-order information creatingmeans, and different with respect to:(1) Target commodities for selling are bicycles for children on the one hand and18

clothing on the other, and(2) “Cartoon character” is used as the information about what user desires on
one hand and not used on the other.
The above differences are examined: The difference in the commodities
sold is nothing more than a change in the kind of commodities handled by the
selling system. From another viewpoint, while the information about whatuser desires including “cartoon character” is used as a search key, choosing
commodities by cartoon character is a common practice. Therefore, theinvention of Claim 1, “A system for selling children’s bicycles,” is nothing morethan an arrangement in which the target commodities of the “Clothing sellingsystem,” (the invention described in the cited reference,) are changed and agenerally known commodity choosing method is applied, which could havebeen easily created by those skilled in the art.
Therefore, the invention according to Claim 1 could have been easily
devised by those skilled in the art on the basis of the invention described in thecited reference.
(Remarks: It should be noted that example 5 explains the method ofdetermining inventive step and that, in actual examination practice,requirements of statutory subject matter etc. are also separately determined.)[Reference]・Examination guidelines for patents and utility models
Part II, Chapter 2, “Novelty, inventive step”
Part VII, Chapter 1, “Computer software inventions” 2.3
・”Examples of business-related un-patentable inventions”
Example 3-1, Example 3-2, Example 3-319