Patentability of Business Method Inventions andInventions with Non-technical Features in Japanversus the US and Europe

By:
Hideo FURUTANI, Japanese Patent Attorney
Furutani Patent Office
TEK No. 2 Building
1-23-20, Esaka-cho, Suita-city
Osaka, 564-0063 JAPAN1.

Introduction

This paper describes business method patents and patents with non-technicalfeatures in Japan and compares them to those in the United States and Europe.
First, the basic requirements for patents and examination guidelines in Japan will
be described. Then, hypothetical claims are used to illustrate the differences
between Japan, the US and Europe. I also include a translation of the document
entitled “Examples of Examinations on Inventions Related to Business Methods”
which was issued on April, 2003 by the Japan Patent Office (hereinafter referred toas JPO).
2.

The Expansion of Patentable Business Method Inventions and Inventions
with non-technical features

2.1
The expansion of patentcomputer-implemented inventions in JapaneligibilityofbusinessandBusiness method inventions are patentable in Japan if they are realized using
computers. Thus, we have to know about patent protection of software
inventions in Japan to understand patent protection of business method
inventions. First, we will examine the evolution of this standard.
(1) Method of Advertising on Utility Poles (1956)1
The invention in this case was a method by which an employee would
exchange advertisement boards on utility poles. The Tokyo high court said thatthe method applied was not the subject matter of a patent, because it did not
utilize the laws of nature.
(2) Examination Guidelines for Computer Related Inventions –vol. 1- (1975)2
These guidelines, no longer in use, showed that computer program related
inventions could be the subject matter of patents if the program handled technicaloperations. Thus, methods of handling technical operations carried out bycomputer programs could be patented. For example, in these guidelines,
methods implemented by computer programs which control manufacturingmachines were subject to patent. However, if a computer program did not
Tokyo high court decision of December 25, 1956, 1956(Gyo-Na)No.12, Gyosei
Saibanrei-shu vol.7 No.12 Page 3157
2 This is out of print now.
You can find this guideline (Japanese version) on
my web site. http://www.furutani.co.jp/office/ronbun/soft-standard-1.pdf
1

2

handle technical operations but non-technical process such as pure mathematicalor economical algorithms, it was not patentable. At that time, computer program
related inventions could be patented as method patents but not as apparatus
patents.
(3) Method for Controlling Operation of a Computer (1980)3
The invention in this case related to a method for classifying data using acomputer. The appeal board of the JPO said that the essence of the invention was
not controlling the operation of a computer, but a mathematical operation. Thus,
the invention was not statutory subject matter.
(4) Method for Displaying Objects (1980)4
The invention in this case was a display method using a computer. The
appeal board of the JPO said that the essential part of the invention was thecomputer program carrying out mathematical operation, and thus the invention
could not be subject matter of a patent.
(5) Examination Guidelines, part VII, chapter 1 (1993)5
These guidelines said that in addition to computer programs which handled
technical operations, computer programs which handled non-technical operations
such as word processing programs were also statutory inventions if suchcomputer programs carried out operations utilizing hardware resources ofcomputers or hardware resources outside computers. These guidelines made it
possible to obtain patents for business methods implemented by computers.
Further, these guidelines clearly deny applying the Point of Novelty Approach inwhich the judgement of whether an invention was statutory subject matter was
based only on the novel part of the invention. The guidelines said that, withregard to the question of statutory subject matter, examiners should consider theinvention as a whole.
(6) Examination Guidelines, part VII, chapter 1 (1996)
These guidelines allowed that a computer readable medium storing a program
was one possible form of claim object. After these guidelines, applicants could
make computer readable medium claims (Beauregard type claims).

Appeal No. 4535 of 1969
Appeal No. 8546 of 1966
5 This is out of print now.
3
4

3

(7) Examination guidelines, part VII, chapter 1 (2000)6
These guidelines, which are still valid, allow that a computer program itself is
one possible form of claim object. By these guidelines, programs themselves aretreated as tangible entities. Since these guidelines came into effect, applicants
have been able to make computer program claims.
(8) Patent Law Amendments (2002)
This law allows that a computer program shall be deemed as a tangible entity7.
Although this was not clearly stated in the Patent Law of 1959, it was indicated in
Examination Guidelines, part VII, chapter 1 (2000).
The Patent Law
Amendments of 2002 confirm that this interpretation is correct.

2.2 The Expansion of Patent Eligibility of Business and Software
Inventions in the United States(1) Hotel Security Checking Co. v. Lorraine Co. (1908)8
In this case, the court said that “art” in Patent Law did not include abstract
ideas of business methods. It is not clear whether the court thought the invention
was statutory subject matter or not. The court decided that the invention was notnovel.
(2) Gottschalk v. Benson (1972)9
The Supreme Court decided that mathematical algorithms having no practicalapplication were not statutory subject matter.
(3) Diamond v. Diehr (1981)10
The Supreme Court decided that a process for curing synthetic rubber which
English version is available at
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm
7 Section 2, paragraph 3 defines “working” as follows:“Working of an invention in this Law means the following acts:(i) in the case of an invention of a product (including computer program or thelike), acts of manufacturing, using, assigning or the like (this means assigningand leasing and in case of computer program including providing it throughcommunication line , importing or offering for assigning or the like (including
showing for assigning or the like).
8 Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908)
9 Gottschalk v. Benson, 409 U.S 63, 175 U.S.P.Q 673 (1972)
10 Diamond v. Diehr, 450 U.S 175, 209 U.S.P.Q 1 (1981)
64

included the use of a mathematical formula and a programmed digital computer
was patentable subject matter under § 101. The Supreme Court said that indetermining the eligibility of claimed processes for patent protection under § 101,
their claims must be considered as a whole, and that it was inappropriate todissect the claims into old and new elements and then to ignore the presence of theold elements in the analysis.
(4) Freeman-Walter-Abele Test (1981)11
USPTO revised its Manual of Patent Examining Procedure 12 (hereinafterreferred to as MPEP) to introduce the Freeman-Walter-Abele Test. This test is a
2-step test.
Step 1 - determine whether the claim directly or indirectly recites analgorithm. If “yes” then proceed to Step 2. Step 2 – determine whether, even if
inoperable or less useful, the claim would be otherwise statutory without thealgorithm.
(5) Paine, Webber, Jackson & Curtis Inc. v. Merril Lynch, Pierce, Fenner &Smith Inc. (1983)13
The invention in this case was directed to a Securities Brokerage-Cash
Management System. The court decided the invention was not a mathematicalalgorithm. The court concluded that the business methods in question which
took the form of a suitably programmed computer system were patenable.
(6) In re Alappat (1994)14
Alappat’s invention was a means for creating a smooth waveform display in adigital oscilloscope. The court said that this invention is not a disembodied
mathematical concept which may be characterized as an “abstract idea”, but rather
a specific machine to produce a useful, concrete, and tangible result.
(7)

In

re

Beauregard(1996) 15

andExamination

Guidelinesfor

In re Freeman, 573 F. 2d 1237, 197 U.S.P.Q. 464 (C.C.P.A. 1978), In re Walter, 618
F. 2d 758, 205 U.S.P.Q. 397 (C.C.P.A. 1980), In re Abele, 684 F. 2d 902, 214 U.S.P.Q.
682 (C.C.P.A. 1982),
12 MPEP2110
13 Paine, Webber, Jackson & Curtis Inc. v. Merril Lynch, Pierce, Fenner &Smith Inc., 564 F. Supp. 1358, 218 U.S.P.Q. 212 (D. Delaware, 1983)
14 In re Alappat, 33 F. 3d 1526, 31 U.S.P.Q. 2d 1545 (Fed. Cir. 1994),
15 In re Freeman, 573 F. 2d 1237, 197 U.S.P.Q. 464 (C.C.P.A. 1978), In re Walter, 618
F. 2d 758, 205 U.S.P.Q. 397 (C.C.P.A. 1980), In re Abele, 684 F. 2d 902, 214 U.S.P.Q.
682 (C.C.P.A. 1982),
11

5

Computer-Related Inventions16
The court did not make a decision, because reconciliation was made between
IBM and USPTO. According to the reconciliation, USPTO issued “Examination
Guidelines for Computer-Related Inventions”. These guidelines allowed that acomputer readable medium storing a program was one possible form of claim
object. The guidelines say that claims should not be categorized as methods of
doing business. Instead such claims should be treated like any other process
claims.
(8) State Street Bank and Trust Co. v. Signature Financial Group, Inc.
(1998)17
In this case, the patent is directed to a data processing system for
implementing an investment structure which was developed for use in Signature’s
business as an administrative and accounting agent for mutual funds. The court
said business methods have been, and should have been, subject to the same legal
requirements for patentability as applied to any other process or method. The
court also said that it had never invoked the business method exception to deeman invention unpatentable. The court said that the system claimed was forproviding a "useful, concrete and tangible result" and thus was statutory subject
matter.
(9) Training Materials Directed to Business, Artificial Intelligence, andMathematical Processing Applications18
This was issued after the State Street Bank decision to illustrate how to apply
Examination Guidelines for Computer-Related Inventions.
The materials
presented a claim directed to a computer program embodying a carrier wave as
the subject matter of a patent.

16

http://www.uspto.gov/web/offices/com/hearings/software/analysis/computer.html17 State Street Bank and Trust Co. v. Signature Financial Group, Inc., 149 F. 3d1368, 47 U.S.P.Q. 2d 1596 (Fed. Cir. 1998), cert. Denied. 525 U.S. 1093(1999)
18 http://www.uspto.gov/web/offices/pac/compexam/examcomp.htm

6

2.3
The Expansion of Patent Eligibility of Business and Software
Inventions in Europe (EPO)19(1) Examination Guidelines20 (1978)
The guidelines said that if the contribution to the known art resided solely in acomputer program then the subject matter was not patentable in whatever manner
it might be presented in the claims.
(2) Vicom decision21 (1986)
In this case, the invention was directed to digital filters. The EPO board of
appeal decided that a claim directed to a technical process which was carried out
under the control of a program (whether by means of hardware or software), was
not the same thing as a computer program as such22.
(3) Sohei decision23 (1995)
The EPO board of appeal said that if technical considerations concerning
particulars of the solution to the problem the invention solved were required inorder to carry out that same invention, an invention comprising functionalfeatures implemented by software (computer programs) was not excluded frompatentability under Article 52(2)(c), (3) EPC.
The board also said that
Non-exclusion from patentability could not be destroyed by an additional feature(methods for doing business) which as such would itself be excluded.

Only decisions of the EPO are mentioned. There are important decision ineach county such as Dispositionsprogramm case (GRUR 1977,96 X ZB23/74),
Automatic Sales Control Decision (20W(pat)8/99) in Germany and System fortrading shares (FSR564), Merrill Lynch Case ([1989]RPC.561,CA.) in the UK.
20 This is out of print now.
You can find this guideline at the following website. http://swpat.ffii.org/papers/epo-gl78/index.en.html
21 T208/84
22 EPC 52(2) describes as follows:(2) The following in particular shall not be regarded as inventions within themeaning of paragraph 1:(a) discoveries, scientific theories and mathematical methods;(b) aesthetic creations;(c) schemes, rules and methods for performing mental acts, playing games ordoing business, and programs for computers;(d) presentations of information.
19

23

T769/927

(4) IBM decision24 (1998)
The EPO board of appeal said that a computer program product was not
excluded from patentability under Article 52(2) and (3) EPC if, when it was run on
a computer, it produced a further technical effect which went beyond the "normal"
physical interactions between program (software) and computer (hardware)".
The board also said a computer program itself should not be excluded frompatentability.
(5) Picture Retrieval System25 (2000)
Although the EPO denied the patentability of a “presentation of information
as such”, the EPO board of appeal said that a record carrier characterized byhaving functional data recorded thereon was not a presentation of information as
such and hence not excluded from patentability.
(6) Controlling Pension Benefits System26 (2000)
The EPO board of appeal said that an apparatus constituting a physical entity
or concrete product, suitable for performing or supporting an economic activity,
was an invention within the meaning of Article 52(1) EPC. However, the board
also said that the improvement envisaged by the invention according to theapplication is an essentially economic one i.e. belonging to the field of economics,
which, therefore, cannot contribute to the inventive step.
(7) Guidelines for examination27 (2000)
The guidelines were amended in 2000. The purpose of the amendment was
to bring the guidelines into line with the above mentioned decisions.
(8) SIM/COMVIK28 (2002)
In this decision, the Board set forth a modified problem/solution approach, inwhich only those features contributing to resolution of technical problems are to
be considered in determining an “inventive step”.

T1173/97
T1194/97
26 T0931/95
27 http://www.european-patent-office.org/legal/gui_lines/e/index.htm
28 T641/00
24
25

8

3.

Requirements to obtain a patent in Japanese Patent Law
The requirements to obtain a patent in Japanese Patent Law are as follows:(1) Invention described in the patent application must fall within the scope ofstatutory subject matter (Section 2(1)).
(2) Invention described in the patent application must be novel (Section 29(1)).
(3) Invention described in the patent application must have an inventive step
(Section 29(2)).
3.1 Statutory Subject Matter(1) In Japan
Japanese Patent Law, Section 2(1) defines statutory inventions as follows:‘An invention’ in this law means the highly advanced creation of technicalideas by which a law of nature is utilized. Therefore, business method inventions
are not statutory inventions, because business methods themselves do not havetechnical aspects but only economic aspects.
Examination guidelines, part VII, chapter 1 (2000) 29 show that where
information processing by software is concretely realized using hardware
resources, the software invention is statutory subject matter30. This means that if,
as a result of reading the software, the computer is transformed into an
information processing machine (or operational method thereof) which isparticularly suitable for given purpose which contains concrete means in whichsoftware and hardware resources are cooperatively working so as to realize
arithmetic operations or the manipulation of information depending on said
purpose, then the software invention is statutory subject matter.
Although business methods themselves are excluded from statutoryThis guideline also says that software carrying out one of the following process
is a statutory invention:i) control of an apparatus (rice cooker, washing machine, engine, hard disk drive,etc.), or related processing; orii) information processing based on the physical or technical properties of an
object (rotation rate of engine, rolling temperature, etc.)
30 2.2.1 (1)29

9inventions, when the information processing machine (or operational method
thereof) contains concrete means, the computer systems for business methods orbusiness methods carried out by computers are patentable.
(2) Comparison with the US and Europe
The differences between Japan, US and Europe are as follows:
In Japan, to meet the requirement for statutory subject matter, businessmethods must use computers which provide concrete means in cooperation with
software.
In the US, to meet the requirement for statutory subject matter, businessmethods must provide a useful, concrete and tangible result, but they do not need
to use computers.
In Europe, to meet the requirement for statutory subject matter, businessmethods must have a technical character. Specifically, business methods need
not only use computers or computer programs, but also exhibit further technicaleffects31.
3.2Novelty

Japanese Patent Law, Section 29(1) describes the condition whereby aninvention lacks novelty:
Any person who has made an invention which is industrially applicable may
obtain a patent therefor, except in the case of the following inventions:(i) inventions which were publicly known in Japan or elsewhere prior to thefiling of the patent application;(ii) inventions which were publicly worked in Japan or elsewhere prior to thefiling of the patent application;(iii) inventions which were described in a publication distributed or available
to the public by means of telecommunication in Japan or elsewhere prior to thefiling of the patent application.
I will not spend much time on novelty here, because statutory subject
matters and the inventive step are more useful for our discussion of businessmethod inventions.

Guidelines for examination amended in 2000 said the further technicaleffect may be known in the prior art.

31

10

3.3 Inventive step(1) In Japan
Japanese Patent Law, Section 29(2) describes the inventive step:
Where an invention could easily have been made, prior to the filing of thepatent application, by a person 32 with ordinary skill in the art to which theinvention pertains, on the basis of an invention or inventions referred to in any of
the subparagraphs of section 29(1), a patent shall not be granted for such an
invention notwithstanding section 29 (1).
The question arises whether a computer system for a business method or abusiness method carried out by a computer, in which the business method isunobvious and the technical aspect of the computer system is known, is patentable
or not.
Examination guidelines, part VII, chapter 1 (2000) says for the inventive step
test “Since the invention should be viewed as a whole, it is inappropriate to deal
with the claimed invention separating the aspect of artificial arrangement and thatof automation technique.”33 Therefore, inventions must be dealt with as a whole.
Business methods are one such artificial arrangement.
From those guidelines, I think this type of business method invention has aninventive step. In many applications, the JPO decides that this type of businessmethod invention has an inventive step.34 However, Mr. Yoshiaki Aida, JPO
Examination guidelines, part VII, chapter 1 (2000) defines “a person having
ordinary skill in the art” as follows:
A person skilled in the art of software-related inventions is expected:
to have common general knowledge both of the applied field of the said
software-related inventions and computer technology (e.g. systematization
technology);
to use ordinary technical means for research and development;
to exercise ordinary creative activity in changing design; andto be able to comprehend all the state of the art in the field of technology towhich the invention pertains (state of the art in the applied field of the said
software and the computer technology) as of the filing.
32

33
34

2.3.1 (2)Committee No.1, PIPA Japanese Group “Investigation of Inventive Step in11

examiner, says that even if a business method is not obvious for person skilled in
the art, and lacks a technical means especially suitable for the business method,
the invention should be treated as being obvious.35(2) Comparison with the US and EU
In Japan, once an invention is judged statutory subject matter, whether theinventive step exists or not is judged based on the invention as a whole. In thisregard, business methods, which use computers which provide concrete means incooperation with software, can contribute to the inventive step in Japan. In otherwords, economic aspect of the business method inventions can contribute to theinventive step.
In the US, all aspects of the invention including business aspects and technicalaspects can contribute to unobviousness.
In Europe, even if the invention includes a computer, if the improvement
envisaged by the invention is an essentially economic one, then the invention does
not have inventive step. In other words, ecomomic improvement cannot
contribute to inventive step36. Only those features solving a technical problem
can be considered for determining the existence of an inventive step37.

3.4 Definiteness of claim(1) In JapanThe Japanese Patent Law, Section 36(6)(ii) describes definiteness as follows:
The statement of the patent claim(s) under 36(2) shall comply with each of thefollowing items as being:(ii) statements setting forth the invention(s) for which a patent is sought andwhich is clear (definite);For business method inventions, it is necessary to describe in the claim how
the business method is carried out using a computer and how hardware resources

Business Method Patents” Intellectual Property Management, p761, vol. 52,
No.12 (2002)
35 Minoru TAKEDA et. al. “Principal and problem of patent examination andappeal” page 27, JIII 2002
36 Controlling Pension Benefits System (T0931/95)
37 SIM/COMVIK (T641/00)
12

are used to carry out the business method.
(2) Comparison with US and EU
In the US, Section 112, paragraph 2 requires that the patent application
particularly point out and distinctly claim the invention. In Europe, Article 84
EPC says that the claims shall .... be clear and concise and be supported by thedescription. They are similar to Japanese requirement of Definiteness of claim(Section 36(6)(ii)).

3.5 Enablement(1) In Japan
Japanese Patent Law, Section 36(4) describes the enablement as follows:
The detailed description of the invention under 36(3)(iii) shall state theinvention, as provided for in an ordinance of Ministry of Economy, Trade andIndustry, in a manner sufficiently clear and complete for the invention to be
carried out by a person having ordinary skill in the art to which the invention
pertains.
(2) Comparison with US and EU
In the US, Section 112, paragraph 1 indicates that the specification anddrawings must provide sufficient information on the invention so as to enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same. In Europe, Article 84 EPC says that theEuropean patent application must disclose the invention in a manner sufficiently
clear and complete for it to be carried out by a person skilled in the art. They are
similar to the Japanese requirement of Enablemant (Section 36(4)) except only the
US has the “best mode requirement”.

4.

Comparison of Patentability in Japan, US and EU
4.1 Comparison of Patentability in Nature of Inventions
Comparison of patentability (including inventive step or unobviousness) inJapan, US and EU is shown in FIG.1.

13

The horizontal axis designates the nature of invention: computer-implemented
inventions containing technical features, computer-implemented inventions
containing non-technical features and business method inventions.
Hatchedareas show possible patentable matter. “computer-implemented inventions
containing technical features” is for example control method for gasoline engine
using computer. “computer-implemented inventions containing non-technicalfeatures” is for example stock price forecast method using computer. The
method achieves the purpose using economical law (non-technical feature).
Although in the USA, all three types of inventions can be patentable, in Japanand the EU business method inventions which do not use computers are notpatentable.
In Japan, computer implemented inventions containing non-technical features
are not statutory subject matter simply by virtue of their using computers.
Therefore, part of the area in Figure 1 indicating computer-implemented
inventions containing non-technical features is not hatched.
If the invention involves the method by which the computer’s hardware
resources are utilized, it is statutory subject matter. However once it has beenfound to be statutory subject matter, all elements, including non-technical features,are considered when deciding whether it has an inventive step. In other words,
14

non-technical features can contribute to the inventive step in Japan.
In Europe, although computer-implemented inventions (especially device
claims) containing non-technical features can be statutory subject matter,
non-technical features cannot contribute to the inventive step. Therefore, in
FIG.1 only the area indicating computer-implemented inventions containing
technical features is hatched.

4.2 Comparison of Patentability in nature of inventions and Claimable
Targets
FIGs. 2-4 compare the patentability of business and computer-implemented
inventions in Japan, the United States and Europe with regards to nature of
inventions and claimable targets. The vertical direction shows claimable targets
and the horizontal direction shows the nature of patentable inventions.
“Claimable targets” means what forms of claims are allowed for patents.
FIG. 2 shows the expansion of patentability of these inventions in Japan.
According to the 1975 guidelines, only apparatus and method claims forcomputer-implemented inventions containing technical features were patentable.
According to the 1993 guidelines, computer-implemented inventions containing
non-technical features also became patentable. According to the 1996 guidelines,
computer readable media became claimable for patents. According to the 2001
guidelines, computer programs themselves could be claimable for patents. The
reason part of the area indicating computer-implemented inventions containing
non-technical features is not hatched is the same as in FIG.1.

5.

Hypothetical Claims for Illustrating the Differences among Japan, the US
and Europe

I will to compare the examination of statutory subject matter in Japan, theUS and Europe on hypothetical claims. These hypothetical claims are madebased on hypothetical claims directed to mutual fund shown in “Training
Materials Directed to Business, Artificial Intelligence, and Mathematical

15

Processing Applications38” issued by the USPTO. Each claim is classified into 6
categories which are shown in the afore mentioned Figure “Comparison of
Statutory Subject Matter”.
Please note that the probable examination results are made by author’s
consideration but are not authorized by any government.
Each category is defined as in the table below:

Category 1
Category 2
Category 3
Category 4
Category 5
Category 6

Japan
NO
NO
YES
YES
YES
YES

The United States
NO
YES
YES
YES
NO
NO

Europe
NO
YES
NO
YES
YES
NO

Note: “NO” means non-statutory subject matter, “YES” means statutory subject matter

4.1 Hypothetical claim 1 : Category 1 (JP:NO, US:NO, EU:NO)
A method of allocating funds for a mutual fund among aplurality of funds in a group, comprising the steps of:a. receiving at least one fund identifier for each of said pluralityof funds;
b. receiving at least one risk ranking factor for each of said
plurality of funds;
c. receiving at least one set of allocation parameters whichcorrespond to the desired allocation of funds relative to a profile
of said ranking factors;
d. recording the fund identifiers, the risk ranking factors and theallocation parameters on a peace of paper;e. receiving an initial investment value which is to be invested in
the funds;
f. receiving an incremental investment allotment value and a38

http://www.uspto.gov/web/offices/pac/compexam/examcomp.htm
16period for the incremental investment allotment value;
g. receiving an indication of allowable level of investor risk; andh. using the recorded fund identifiers, the risk ranking factors
and the allocation parameters in combination with the initialinvestment value, the incremental investment allotment value,
the period for the incremental investment allotment value, andthe indication of allowable level of investor risk to provide an
optimum account allocation between the funds in the group.
The JPO will say that the invention according to claim 1 lacks the statutory
invention requirement of Section 29(1), because claim 1 does not describe specifictechnical matter but human acts which do not utilize a computer.
The invention according to claim 1 does not seem to be statutory subject
matter in the US, because the claimed invention merely calculates an optimum
account allocation for the funds in the mutual funds. It does not optimally
allocate the funds. The claimed invention does not provide a concrete andtangible result.
I think in the EPO, the invention according to claim 1 is not statutory subject
matter, because the invention is merely a method of doing business.
4.2

Hypothetical claim 2 : Category 2 (JP:NO, US:YES, EU:NO)
The method of claim 1: further comprisingi. showing the optimum account allocation on an investor
monthly account summary report to an investor or broker.

The JPO will say that the invention according to claim 2 lacks the statutory
invention requirement of Section 29(1), because claim 2 does not describe specifictechnical matter but human acts which do not utilize a computer.
The invention according to claim 2 seems to be statutory subject matter in theUS, because a summary report has real world value and provides immediate
benefit. The claimed invention is also limited to the practical application of
displaying the optimal account allocation to the investor. The claimed invention
provides concrete and tangible result.
17

I think in the EPO, the invention according to claim 2 is not statutory subject
matter, because the invention is merely a method of doing business.
4.3 Hypothetical claim 3 : Category 2 (JP:NO, US:YES, EU:NO)
A method of allocating funds for a mutual fund among aplurality of funds in a group using computer system which
comprises recording part, receiving means, generating means,storing means, providing means and displaying means,comprising the steps of:a. receiving by said receiving means, at least one fund identifier
for each of said plurality of funds;
b. receiving by said receiving means, at least one risk ranking
factor for each of said plurality of funds;c. generating by said generating means, at least one set ofallocation parameters which correspond to the desired allocationof funds relative to a profile of said ranking factors;
d. storing by said storing means, the fund identifiers, the risk
ranking factors and the allocation parameters on said recording
part;e. receiving by said receiving means, an initial investment value
which is to be invested in the funds;
f. receiving by said receiving means, an incremental investment
allotment value and a period for the incremental investment
allotment value;
g. receiving by said receiving means, an indication of allowablelevel of investor risk;h. providing an optimum account allocation between the funds inthe group using the recorded fund identifiers, the risk ranking
factors and the allocation parameters in combination with theinitial investment value, the incremental investment allotment
value, the period for the incremental investment allotment value,
and the indication of allowable level of investor risk;18

i. displaying the optimum account allocation on an investor
monthly account summary report to an investor or broker.
The JPO will say that the invention according to claim 3 lacks the statutory
invention requirement of Section 29(1), because claim 3 includes a computer
system and describes the operation (providing an optimum account allocation
using several data) to be carried out by the computer system, but fails to describe
how the computer caries out the operations using several data and hardware
resources thereof concretely.
The invention according to claim 3 seems to be statutory subject matter in theUS, because a summary report has real world value and provides immediate
benefit. The claimed invention is also limited to the practical application of
displaying the optimal account allocation to the investor. The claimed invention
provides concrete and tangible result.
I think in the EPO, the invention according to claim 3 is not statutory subject
matter, because a further technical effect is not found. Even if the invention ofclaim 3 is statutory subject matter, the important factor of claim 3 i.e. how toprovide an optimal account allocation cannot contribute to the inventive step.
4.4 Hypothetical claim 4 : Category 3 (JP:YES, US:YES, EU:NO)
The method of claim 3, whereinsaid step (h) of providing an optimum account allocation between
the funds in the group is obtained by the following steps:
obtaining plural sets of allocation parameters by changing
at least one parameter of said at least one set of allocation
parameters;
obtaining an initial individual investment value for eachfund of each set of allocation parameters based on said
initial investment value and said allocation parameters;
obtaining average level of risk for each of said plural setsof allocation parameters by calculating average of risk
factors weighed according to said initial individual
investment value;

19selecting sets of allocation parameters which have lower
average levels of risk than allowable level of investor risk
from all of said plural sets of allocation parameters;
selecting a set of allocation parameters which has best
profit per day calculated by initial investment value, theincremental investment allotment value, and the period
for the incremental investment allotment value.
The JPO will say that the invention according to claim 4 satisfys the statutory
invention requirement of Section 29(1), because claim 4 includes a computer
system and how the computer caries out the operation using hardware resources
thereof to provide an optimum account allocation.
The invention according to claim 4 seems to be statutory subject matter in theUS, because a summary report has real world value and provides immediate
benefit. The claimed invention is also limited to the practical application of
displaying the optimal account allocation to the investor. The claimed invention
provides a concrete and tangible result.
I think in the EPO, the invention according to claim 4 is not statutory subject
matter, because a further technical effect is not found. Even if the invention ofclaim 4 is statutory subject matter, the important factor of claim 4 i.e. how toprovide an optimal account allocation cannot contribute to the inventive step.

4.5 Hypothetical claim 5 : Category 4 (JP:YES, US:YES, EU:YES)(has not been made yet)

4.6 Hypothetical claim 6 : Category 5 (JP:YES, US:NO, EU:YES)(has not been made yet)

4.6 Hypothetical claim 7 : Category 6 (JP:YES, US:NO, EU:NO)
A method of allocating funds for a mutual fund among aplurality of funds in a group using a computer system which
comprises recording part, receiving means, generating means,20

storing means, providing
comprising the steps of:

means

and

displaying

means,

a. receiving by said receiving means, at least one fund identifier
for each of said plurality of funds;
b. receiving by said receiving means, at least one risk ranking
factor for each of said plurality of funds;c. generating by said generating means, at least one set ofallocation parameters which correspond to the desired allocationof funds relative to a profile of said ranking factors;
d. storing by said storing means, the fund identifiers, the risk
ranking factors and the allocation parameters on said recording
part;e. receiving by said receiving means, an initial investment value
which is to be invested in the funds;
f. receiving by said receiving means, an incremental investment
allotment value and a period for the incremental investment
allotment value;
g. receiving by said receiving means, an indication of allowablelevel of investor risk;h. providing an optimum account allocation between the funds inthe group by following steps:
obtaining plural sets of allocation parameters by changing at least
one parameter of said at least one set of allocation parameters;
obtaining an initial individual investment value for each fund ofeach set of allocation parameters based on said initial investment
value and said allocation parameters;
obtaining average level of risk for each of said plural sets ofallocation parameters by calculating average of risk factors
weighed according to said initial individual investment value;
selecting sets of allocation parameters which have lower averagelevels of risk than allowable level of investor risk from all of said
plural sets of allocation parameters;21

selecting a set of allocation parameters which has best profit per
day calculated by initial investment value, the incremental
investment allotment value, and the period for the incremental
investment allotment value.
The JPO will say that the invention according to claim 7 satisfies the statutory
invention requirement of Section 29(1), because claim 7 includes a computer
system and how the computer caries out the operation using hardware resources
thereof to provide an optimum account allocation.
The invention according to claim 7 does not seem to be statutory subject
matter in the US, because the claimed invention merely calculates an optimum
account allocation for the funds in the mutual fund. It does not optimally
allocate the funds. The claimed invention does not provide concrete and tangible
result.
I think in the EPO, the invention according to claim 7 is not statutory subject
matter, because a further technical effect is not found. Even if the invention ofclaim 7 is statutory subject matter, the important factor of claim 7 i.e. how toprovide an optimal account allocation cannot contribute to the inventive step

6.

Examples of Examination on the Inventions Related to Business Methods

These examples were published by JPO on April, 2003. Five examples areincluded to illustrate examinations of Statutory subject matters, Inventive step,
Definiteness and Enablement. English translation 39 of these examples areattached in this paper.
5.1 Example 1 : Category 2 (JP:NO40, US:YES41, EP:NO)(1) Claim 1
Claim 1 of example 1 is as follows:An application document receipt processing system having an agent
The translation was completed by Hideo FURUTANI and is not authorized by
JPO.
40 The results in Bold are governments’ judgements.
41 The results in Italics are my speculations.
39

22

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 by filling in forms corresponding to the application
documents with necessary items such as the name and address of theapplicant and sending the application documents to the public
institution through the postal service or communication lines, andthe public institution performs the process of checking whether or
not 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 thepostal service or communication lines.
The JPO says the invention according to claim 1 lacks the statutory invention
requirement of Section 29(1). In my interpretation of the JPO’s explanation, claim
1 does not describe specific technical matter but social system which does not
utilize a computer.
In my opinion, the invention according to claim 1 seems to be statutory subject
matter in the US, because sending a reception number to an agency has a realworld value. I think in the EPO, the invention according to claim 1 is not
statutory subject matter, because the invention is merely a method of doing
business.
(2) Claim 2 : Category 2 (JP:NO, US:YES, EP:NO)
Claim 2 of example 1 is as follows: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 theapplication documents with necessary items such as the name andaddress of the applicant and sending the application documents to the
public institution through communication lines,
the public institution uses computers to perform the process ofchecking whether or not omission is present in the submitted
23

documents, providing a receipt serial number in case no omission ispresent, and sending the receipt serial number to the agent, the source of
the application, through the communication lines.
The JPO says the invention according to claim 2 lacks the statutory invention
requirement of Section 29(1). Claim 2 includes a computer, but the computer isused as just a tool. In my interpretation of the JPO’s explanation, the important
process for achieving the aim underlying the invention is carried out by humans
and thus information processing equipment (machine) particularly suitable for agiven purpose is not created.
In my opinion, an invention according to claim 2 seems to be statutory subject
matter in the US, because sending a reception number to an agency has a realworld value. I think in the EPO, the invention according to the claim 2 is not
statutory subject matter, because a further technical effect is not found.
(3) Claim 3 : Category 2 (JP:NO, US:YES, EP:NO)
Claim 3 of example 1 is as follows: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 is connected to the agent terminal through a communication
network, characterized in that the public institution computer
comprises:
means for receiving application document data coming sent fromthe agent terminal;means for checking whether or not an omission of data is present in
the received application document data; andmeans for providing a receipt serial number in case no omission ispresent, and sending the receipt serial number to the agent terminal
through the communication network.
The JPO says an invention according to claim 3 lacks the statutory invention
requirement of Section 29(1). Claim 3 describes the operation (finding any
omissions on the document.) to be carried out by the computer system, but fails to
describe how the computer caries out the operations using the hardware resources
thereof.
24

In my opinion, the invention according to claim 3 seems to be statutory subject
matter in the US, because sending a reception number to an agency has real world
value. I think in the EPO, the invention according to claim 3 is not statutory
subject matter, because a further technical effect is not found.

(4) Claim 4 : Category 3 (JP:YES, US:YES, EP:NO)
Claim 4 of example 1 is as follows: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 is connected 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 andthe agent ID sent from the agent terminal onto the application document
storing means;means for reading in succession the application document data andthe agent ID out of the application document storing means and for
detecting an omission in writing the application contents according towhether 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, andfor sending the receipt serial number to the agent terminal on the basisof the agent ID through the communication network.
The JPO says an invention according to claim 4 satisfies the statutory
invention requirement of Section 29(1). Claim 4 describes how the computer
caries out the operation using hardware resources thereof to find omissions basedon the existence of NULL codes in the documents. In this way the information
processing equipment (machine) particularly suitable for a given purpose iscreated.

25

In my opinion, the invention according to claim 4 seems to be statutory subject
matter in the US, because once again sending a reception number to an agency hasreal world value. I think in the EPO, the invention according to claim 4 is not
statutory subject matter, because a further technical effect is not found.
(5) My opinion about the JPO’s judgement
In my opinion, if the problem to be solved by the invention is not that offinding omissions on the document but that of to realize in a computer system
which can accept petition documents through agents (in condition that how tofind omissions is well known technique), then in addition to claim 4, claim 3 alsosatisfies the statutory invention requirement of Section 29(1). This is because
claim 3 describes how the computer caries out the operation to realize such asystem.
I have omitted Example 2, because this Example deals with similar situation to
Example 1.
5.2 Example 3 : Category 2 (JP:NO, US:YES, EP:NO)(1) Claim 1
Claim 1 of example 3 is as follows: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 searchingfor idea information corresponding to the needs information of theadvertisement client, providing the idea information to theadvertisement client, and providing the needs information to theadvertisement agent.
The JPO says an invention according to claim 1 lacks the definitive
requirement of Section 36(6)(ii). In claim 1, it is not clear whether the registeringfunction, searching function and providing function are obtained by the functionof a computer or obtained by human action.

26

The JPO says the invention of claim 1 also lacks the statutory invention
requirement of Section 29(1). If the functions are not obtained by the function of
a computer, it is a social system which does not utilize a computer. Even if thefunctions are obtained by the function of a computer, it fails to describe how thecomputer caries out the operations using hardware resources thereof.
In my opinion, the invention according to claim 1 seems to be statutory subject
matter in the US, because providing idea information for advertisement to a clientand providing needs information for advertisement have real world value. I
think in the EPO, the invention according to claim 1 is not statutory subject matter,because the invention is a method of doing business.
(2) Claim 2
Claim 2 of example 3 is as follows:An advertisement mediating system in which client-side computersseparately owned by plural advertisement clients and agent-side
computers separately owned by plural advertisement agents are
separately connected to an advertisement mediating computer througha 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, theidea 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 same format 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 theidea information stored in the idea information storing means, a seriesof processes including:
process of reading the agent ID, the idea information, and the ideaclassifying data from the idea information storing means and storingthem in an operational storing means;process of implementing an AND operation of the idea classifying
27

data and the needs classifying data;process of implementing a EXCLUSIVE-OR operation of thecalculated results of the logical multiplication and the needs classifying
data; andunacceptable idea deleting process of deleting, from the operational
storing means, the agent ID, the idea information, and the ideaclassifying 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
storing means 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.
The JPO says the invention according to claim 2 satisfies both of the statutory
invention requirement of Section 29(1) and the definitive requirement of Section
36(6)(ii). In claim 2, it is clear that registering means, searching means andproviding means are obtained by function of a computer. Claim 2 describes how
the computer caries out the operation using hardware resources thereof to realize
the intermediary service.
In my opinion, the invention according to claim 2 seems to be statutory subject
matter in the US, because providing idea information for advertisement to a clientand providing needs information for advertisement to an agent have real world
value. I think in the EPO, the invention according to claim 2 is seems to be
statutory subject matter, because a further technical effect is found.
(3) My opinion about the JPO’s judgement
I think there is a wide margin between claim 1 and claim 2, and neither claim 1
nor claim 2 are on the border line. In my opinion, the following claim satisfies
the statutory invention requirement of Section 29(1) and the definitive
requirement of Section 36(6)(ii) in Japan.
An advertisement mediating system in which client-side computersseparately owned by plural advertisement clients and agent-side
computers separately owned by plural advertisement agents are
separately connected to an advertisement mediating computer througha communication network, characterized in that the advertisement
mediating computer comprises:28

idea information storing means for storing the advertisement
agent’s idea information as related to the agent ID and idea classifying
data for indicating at least one target commodity category;idea information registering means for registering the agent ID, theidea 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, a client ID,
needs information, and mediation request data including needs
classifying data for indicating at least one target commodity category;means for selecting idea information data, from the stored idea
information data, which have at least one same target category with oneof target categories of the needs information, upon receiving themediation request data;means for sending the selected idea information to the client-side
computer and sending the needs information to the agent-side computer
corresponding to the agent ID.

5.3 Example 5 : Category 4 (JP:YES, US:YES, EP:YES)(1) Claim 1
Claim 1 of example 5 is as follows:
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 user desires including atleast color and cartoon character desired by users,
means for entering physical information about user such as theheight of users,
means for searching commodity information according to theinformation about what the 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 the user desires and physical information aboutuser in case the commodity choosing means cannot determine thecommodity, andmeans for receiving an order for the commodity chosen with thecommodity choosing means or an order for the commodity according to
the made-to-order information created with the made-to-order29

information creating means.
(2) Reference
Reference discloses the following features:
・ 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 to decide favorite commodity, and physical information about user such asheight to decide the size of the commodity.
・The commodity selling system searches the commodity information database (seeFIG. 1) using the information about what the user desires and physicalinformation about user sent from the consumer’s computer as search keys and, if acommodity that conforms to the conditions is present, sends the information to theconsumer’s computer.
・In case no commodity is present that matches the conditions, the commodity
selling system creates information about a made to order matching the conditions
and sends the information to the consumer’s computer.
・The consumer’s computer employs a user interface to output to the display any
commodity information received from the commodity selling system and to giveorder instructions for purchasing the commodity.
FIG. 1
Commodity
Sweater
Sweater
Sweater
Sweater
Sweater
Sweater
…

Size
S
M
L
S
M
L
…

DesignV-neck
V-neck
V-neckTurtleTurtleTurtle…

Suitable height
140 – 150
150 – 160
160 – 170
130 – 155
150 – 175
170 – 185…

(3) Inventive step

30

Color
Red, Navy blue
Pink, Light navy blue
Dark red, Dark navy blue
Dark orange, Dark purple
Orange, Purple
Light orange, Light purple…

The JPO says the invention according to claim 1 lacks the inventive steprequirement of Section 29(2).
The differences between an invention according to claim 1 and disclosed
matter in the reference are i) the difference of goods to be sold i.e. chiledren’s cycle
VS clothes, ii) the difference of request information (claim allows usres to ordercommodities with popular cartoon character’s drawing or not.
It would be obvious to make the claimed invention from reference invention
by exchanging clothes with bicycles. the selecting goods based on what cartoon
character is common knowledge.
In my opinion, also in the US an invention according to claim 1 seems to be
obvious from the referenc. I think in the EPO, the invention according to claim 1
lacks the inventive step, because the differences i) and ii) do not contribute theinventive step.

7.

Other Examples of Examination for Comparison

I will compare the examination of statutory subject matter on a few moreclaim examples.
6.1
B3b42

Report on Comparative Study Carried Out Under Trilateral Project(1) Hypothetical Claim Set A
For this claim set, the JPO and the USPTO showed the examination result
for their study. I will hypothesize probable results of an examination by EPO.
i) Claim 1

Category 1(JP:NO, US:NO, EP:NO)

A service method of granting points in accordance with anamount of the merchandise transaction, comprising the steps of:designating by a customer, a name of a person to whom points issued inaccordance with the amount of the merchandise transaction are to be
granted;42

http://www.jpo.go.jp/saikine/tws/b3b_start_page.htm
31

selecting, in response to the name of the designated person, theaddress of the designated person from a customer list;
registering the address of the designated person in a customer list if theaddress is not available;
storing the value of the points granted to the designated person in
the customer list; andsending a notice that the points were granted, to the address of thedesignated person.

ii) Claim 2

Category 1(JP:NO, US:NO, EP:NO)

A service method, wherein points are granted in accordance with
an amount of the merchandise transaction made by a customer at a shopon the Internet, comprising the steps of:designating by the customer, a name of a person to whom points issuedin accordance with the amount of the merchandise transaction are to be
granted;selecting, in response to the name of the designated person, thee-mail address of the designated person from a customer list;
registering the e-mail address of the designated person in a customer list
if the e-mail address is not available;
storing the value of the points granted to the designated person in
the customer list; andsending a notice that the points were granted, to the e-mailaddress of the designated person.

iii) Claim 3

Category 6(JP:YES, US:NO, EP:NO)

A service method for granting points in accordance with an amountof the merchandise transaction at a shop on the Internet, comprising thesteps of:designating to a server, a name of a person to whom points issuedin accordance with the amount of the merchandise transaction are to be
granted;selecting by the server, in response to the name of the designatedperson, the e-mail address of the designated person from a customer list
storage unit, which is provided on the server;
32

registering by the server, the e-mail address of the designatedperson in a customer list storage unit if the e-mail address is notavailable;
storing by the server, the value of the points granted to thedesignated person in the customer list storage unit; andsending by the server, a notice that the points were granted, to thee-mail address of the designated person.
iv) Claim 4

Category 6(JP:YES, US:NO, EP:NO)

A service method for granting points in accordance with an amountof the merchandise transaction at a shop on the Internet, comprising
the steps of:designating to a server, a name of a person to whom points issuedin accordance with the amount of the merchandise transaction are to be
granted;selecting by the server, in response to the name of the designatedperson, the e-mail address of the designated person from a customer list
storage unit, which is provided on the server;
registering by the server, the e-mail address of the designatedperson in a customer list storage unit if the e-mail address is notavailable;
storing by the server, the value of the points granted to thedesignated person in the customer list storage unit; andsending by the server, a notice that the points were granted, to thee-mail address of the designated person, andthe steps being characterized in that:the points issued against the merchandise transaction are calculated
as those issued against the cost of the merchandise transaction inclusiveof taxes.
v) Claim 5

Category 6(JP:YES, US:NO, EP:NO)

A service method for granting points in accordance with an amountof the merchandise transaction at a shop on the Internet, comprising
the steps of:designating to a server, a name of a person to whom points issuedin accordance with the amount of the merchandise transaction are to be
granted;selecting by the server, in response to the name of the designated33person, the e-mail address of the designated person from a customer list
storage unit, which is provided on the server;
registering by the server, the e-mail address of the designatedperson in a customer list storage unit if the e-mail address is notavailable;
storing by the server, the value of the points granted to thedesignated person in the customer list storage unit; andsending by the server, a notice that the points were granted, to thee-mail address of the designated person, andthe steps being characterized in that:the number of points awarded are increased to 10 times the numberof points normally awarded for that merchandise transaction in one outof every twenty transactions.
vi) Claim 6

Category 4 (or 3)(JP:YES, US:NO, EP:YES)

A service method for granting points in accordance with an amountof the merchandise transaction at a shop on the Internet, comprising thesteps of:designating to a server, a name of a person to whom points issuedin accordance with the amount of the merchandise transaction are to be
granted;selecting by the server, in response to the name of the designatedperson, the e-mail address of the designated person from a customer list
storage unit, which is provided on the server;
registering by the server, the e-mail address of the designatedperson in a customer list storage unit if the e-mail address is notavailable;
storing by the server, the value of the points granted to thedesignated person in the customer list storage unit;
calling by the server, a comprehensive list of merchandise from amerchandise information storing means for storing a list of merchandise
corresponding with the name and price of the merchandise purchasedor the number of points necessary for the purchase thereof;
converting by the server, the comprehensive list of merchandise intoa list, such that the merchandise available merely by redeeming thevalue of the points can be distinguished from other merchandise; andsending by the server, a notice that the points were granted,
attaching thereto the comprehensive list of merchandise as converted, tothe e-mail address of the designated person.
34

(2) Hypothetical Claim Set B
For this claim set, JPO and USPTO showed the examination result forstudy. I make probable results of examination by EPO.
i) Claim 1

Category 1(JP:NO, US:NO, EP:NO)

A method for approving the settlement of charges with a forward
exchange contract by an individual consumer, the method being
characterized in that it comprises:
issuing an invitation by a credit card issuing company A to a user ofa credit card issued by company A to apply for a forward exchange
contract of a currency D on a specified date, wherein the user isscheduled to make settlement of a small amount in a foreign currency;
application by the user for a forward exchange contract withcompany A for the purchase of a specified amount of currency D bysubmission of the user's name and credit card number to company A,
said user becoming a participant in an application invitation program
run by company A if the application is accepted;
performance by company A of a forward exchange contract for thepurchase of currency D on a specified date for an amount at least equal
to the forward exchange contracts of all participants in the application
invitation program;performing by a participant in the application invitation program ofa transaction with a member shop in the program which can settle thetransaction in the currency D;
submission by member shops of charges associated with theparticipant transactions to company A after a check of the participant
status with company A has been completed;totaling by company A, as closed on a specified date, of charges
submitted by the member shops and determining the amount of thetotal charges in currency D; andtotaling the required settlements of the participant in currency D;
where the settlement amount is smaller than the amount of theforward exchange contract that was applied for by the participant
approving the settlement amount at the exchange rate on a specified
date, and in the event that it is greater than the amount of the forward
contract applied for approving the settlement amount up to the amountof the forward exchange contract applied for at the exchange rate on a35

specified date, and computing the excess at the exchange rate at theclosing day used as the basis for charges.
ii) Claim 2

Category 3 (or 4)(JP:YES, US:YES, EP:NO)

A method for processing data on computer system to implement a
forward exchange contract by an individual consumer, wherein the dataprocessing for the forward exchange contract is characterized in that itcomprising of the steps of:
issuing an invitation by a web server of a credit card issuing
company A to a user of a credit card issued by company A to apply for a
forward exchange contract of a currency D on a specified date, wherein
the user is scheduled to make settlement of a small amount in a foreign
currency;
application by the user terminal for a forward exchange contract
with company A for the purchase of a specified amount of currency D
by submission of the user's name and credit card number to company A,
said user becoming a participant in an application invitation program
run by company A if the application is accepted;
performance by a forward exchange contract system of company A
of a forward exchange contract for the purchase of currency D on a
specified date for an amount at least equal to the forward exchange
contracts of all participants in the application invitation program;performing of a transaction with a participant in the application
invitation program by a system of a member shop in the program which
can settle the transaction in the currency D;
submission by a system of member shops of charges associated withthe participant transactions to company A after a check of theparticipant status with company A has been completed;totaling by the business system of company A, as closed on a
specified date, of charges submitted by the systems of the member
shops and payment of the charges by the business system of company A
to the systems of the member shops in currency D; andtotaling by the business system of company A settlements of theparticipant in currency D;
where the settlement amount is smaller than the amount of theforward exchange contract that was applied for by the participant
charging the settlement amount at the exchange rate on a specified
date, and in the event that it is greater than the amount of theforward contract applied for computing the settlement amount up to36

the amount of the forward exchange contract applied for at theexchange rate on a specified date, and computing the excess at theexchange rate at the closing day used as the basis for charges.
iii) Claim 3

Category 3 (or 4)(JP:YES, US:YES, EP:NO)

The method of claim 2 for processing data on computer system to
implement the forward exchange contract by an individual consumer,
the method being characterized in that it further comprises:
the providing of the invitation includes posting an advertisement on
the web server of company A to invite users who own credit cards thatwere issued by the company A and who are scheduled to make a small
amount of settlement in a foreign currency, to apply for a forward
exchange contract and receiving the name and credit card number aswell as the number of currency units entered from the user terminal inan application form on the display screen on their user terminal thatappears when the users click on the advertisement page on the browser;
the application by the user terminal include inviting the applicant toclose a forward exchange contract and accepting the application for thecurrency exchange contract if the credit card is valid and if the numberof currency units is found to be within the credit limit of the credit cardand;upon acceptance of the application for the forward exchange
contract closing the forward exchange contract in the currency D
through negotiation between the forward exchange contract processing
system of the company A and the forward exchange contract processing
system of an exchange broker;
wherein the step for totaling charges on the settlement system of
the company A includes totaling data on charges submitted via acharging system of the member shops as closed on a specified dateafter the participant in the application invitation program has
performed the transaction with the member shops which can settle
the transaction in the currency D, and after paying the charges in thecurrency D totaling transaction settlements by credit card in thecurrency D regarding the participant in the application invitation
program.
iv) Claim 4

Category 3 (or 4)(JP:YES, US:YES, EP:NO)

The method of Claim 3 for processing data on a computer system to37

implement the closing of a forward exchange contract by an individual
consumer, the method being characterized in that the validation step of
the credit card comprising of:Checking if the applicant is a gold card owner, and rejecting theapplicant is not a gold card owner.
v) Claim 5

Category 3 (or 4)(JP:YES, US:YES, EP:NO)

The method of Claim 3 for processing data on a computer system to
implement the closing of a forward exchange contract by an individual
consumer, the method further comprising the processing of settling thetransaction at the exchange rate on the closing day being used as thebasis of charges in the event that a credit card owner with thetransaction record of more than a specified value has declared that he or
she will not close any forward exchange contract against a certaintransaction.
vi) Claim 6

Category 3 (or 4)(JP:YES, US:YES, EP:NO)

The method of Claim 3 for processing data on a computer system
to implement the closing of a forward exchange contract by anindividual consumer, the method further comprising the process,wherein in the event that, when a merchandise transaction
application is sent using the terminal of a credit card owner with atransaction record of greater than a specified value, to the on-line
member shop on the Internet of the company A, data on the exchange
rate fluctuations for a certain period in the past can be extracted, by
an exchange rate forecast system in the on-line shop, from thedatabase and then an applet for graphically indicating the exchange
rate fluctuations will be sent to the browser on the terminal of thecredit card owner, whereas if the credit card owner should send,using the terminal, a notice to the effect that he or she will not close
any forward exchange contract for a certain transaction, the transaction
can then be settled at the exchange rate on the designated date.

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6.2 Training Materials Directed to Business, Artificial Intelligence, andMathematical Processing Applications43(1) Mutual Fundi) Claim 1

Category 1(JP:NO, US:NO, EP:NO)

A computerized method of allocating funds for a mutual fundamong a plurality of funds in a group, comprising the steps of:a. receiving at least one fund identifier for each of said plurality offunds;
b. receiving at least one risk ranking factor for each of said pluralityof funds;
c. receiving at least one set of allocation parameters whichcorrespond to the desired allocation of funds relative to a profile of saidranking factors;
d. storing the fund identifiers, the risk ranking factors and theallocation parameters on a computer readable medium;e. receiving an initial investment value which is to be invested in thefunds;
f. receiving an incremental investment allotment value and a period
for the incremental investment allotment value;
g. receiving an indication of allowable level of investor risk; andh. using the stored fund identifiers, the risk ranking factors and theallocation parameters in combination with the initial investment value,
the incremental investment allotment value, the period for theincremental investment allotment value, an d the indication of allowablelevel of investor risk to provide an optimum account allocation between
the funds in the group.
ii) Claim 2

Category 2(JP:NO, US:YES, EP:NO)

The method of claim 1, further including the step of displaying the
optimum account allocation on an investor monthly account summary
report to an investor or broker.
iii) Claim 3

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Category 2(JP:NO, US:YES, EP:NO)

http://www.uspto.gov/web/offices/pac/compexam/examcomp.htm
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The method of claim 1, further including the step of transferring
funds between the mutual funds in the group according to the optimum
account allocation.

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