1 Examination Guidelines for Business Method Invention 24. Jan Young-tae Son( 孫永泰, Electronic Commerce Examination Team Korean Intellectual Property Office “KIPO-SIPO Patent Expert Meeting” (Daejeon Korea, 2008)

KIPO-SIPO JPAS(24-JAN-2008) 2/21 Contents Overview Business Method Invention(BMI) Introduction to Examination dept. Preferential examination system Statistics of BMI Examination guidelines of BMI Q&A

KIPO-SIPO JPAS(24-JAN-2008) 3/21 Business Method Invention (BMI) Business Model In case of managing business for the purpose of benefit, means, business idea, etc. for achieving the purpose Business Method(BM) is in the patent area BMI(Business Method Invention), BMP(BM Patent) Invention embodying idea of BM in concrete technical means having industrial applicability, based on technology of computer, communication, internet. BMP = Business Model + Computer-technology(HW+SW) Computer Communication Technology (Patentable) Business Idea (Unpatentable) BM Invention (Patnetable)

KIPO-SIPO JPAS(24-JAN-2008) 4/21 Examination Department of BMP Electronic Commerce Examination Team In Electric & Electrical Examination Bureau 25 Patent examiners One team manager Over 20 examiners with Ph. D.

KIPO-SIPO JPAS(24-JAN-2008) 5/21 International Patent Classification for BMI G06F 17/00, 17/60, 19/00 G06Q xx (25 classification, IPC Ver. 8 th ) DATA PROCESSING SYSTEMS OR METHODS, SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES. 10/00 : Administration 20/00 : Payment schemes 30/00 : Commerce, e.g. marketing, shopping, billing, auctions or e-commerce. 40/00 : Finance, e.g. banking, investment or tax processing; Insurance 50/00 : health care, utilities, tourism or legal services.. 90/00 : Systems or methods specially adapted for administrative, commercial, financial 99/00 : In other groups of this subclass. 25 Classes break down into 115 detailed sub-classes G06Q xx/00 A0~ E.g. G06Q 40/00 G06Q 40/00 A0 : operations in finance company G06Q 40/00 B0 : operations inter finance company G06Q 40/00 C0 : operations finance to customer G06Q 40/00 D0 : service of finance, insurance D1 : credit, loan D2 : securities D3 : insurance D4 : derivative …. D7 : bank service G06Q 40/00 E0 : banking terminal G06Q 40/00 F0 : cyber finance transaction.

KIPO-SIPO JPAS(24-JAN-2008) 6/21 Preferential Examination of BMI Patent application for e-commerce related invention could be preferentially examined since July 2000 Major subject matter of Preferential Examination Trading method, e-money, payment technology in e-commerce Security or authentication technology for e-commerce In case of no rejection reason, patent can be registered within 2-3 months Rate of request for preferential examination of BMI: about 8.3% (FY 2006)

KIPO-SIPO JPAS(24-JAN-2008) 7/21 Patent Application Trend

KIPO-SIPO JPAS(24-JAN-2008) 8/21 Patent Registration Trend

KIPO-SIPO JPAS(24-JAN-2008) 9/21 Patent Grants Rate Trend

KIPO-SIPO JPAS(24-JAN-2008) 10/21 Patent Application for Each BM Field

KIPO-SIPO JPAS(24-JAN-2008) 11/21 History of Guidelines in KIPO 1984 : Established Exam. guidelines for Computer related Invention 1998 : Revised Guidelines for Computer related Invention Added software area into the guidelines 2000 : Established Guidelines for e-Commerce related Invention Presented clear guideline for e-commerce (BM) invention 2005 : Revised Guidelines for Computer related Invention Included business related invention into the guidelines

KIPO-SIPO JPAS(24-JAN-2008) 12/21 Manuals of BMP Examining Procedure A general examination guideline for all invention A examination guideline for BM invention ( ) A examination guideline for computer-related invention ( ) A manual of examination guideline for computer-related invention ( )

KIPO-SIPO JPAS(24-JAN-2008) 13/21 Guideline for BMP(1)- Patentable subject matter Creation of technological ideas using law of nature The BM invention should be claimed in the form of being combined with technical means such as computer hardware and software Examples that data processing by software is concretely embodied by hardware Data processing device for operating with the relevant software Method for operating the relevant data processing device Computer-readable medium storing the software

KIPO-SIPO JPAS(24-JAN-2008) 14/21 Guideline for BMP(2)- Patentable subject matter BMP or BMI = BM (Business Model) + IT (Information Technology) No Patentable subject matter Business method itself Abstract Ideas Mathematical algorithm, formula or equation Data structure itself Computer program itself Simple information Artificial decision, selection or Mental working Financial method, teaching method Playing or game method Law of economy

KIPO-SIPO JPAS(24-JAN-2008) 15/21 Guideline for BMP(3)- Method of determining Case by Case Approach BMI is combination of business method and computer technology ‘Gray area’ exists => Difficult to determining patentability Claim Standard Determining from contents of claims only As A Whole Standard Examining by wholly understanding the meaning of elements Weight Standard In case that the subject of act is human, it is unpatentable Simple act of human (log-in, click, etc.) is permitted Concreteness of Means standard Having effect more than that of simply utilizing hardware

KIPO-SIPO JPAS(24-JAN-2008) 16/21 Guideline for BMP(4)-Obviousness General Rule Could the claimed invention be obviously derived from prior art? Considering the technical standard of the time when the application was filed Examples showing conventional creative capability (not having obviousness) Adding well-known means or means having common usage Softwarerizing the function performed by hardware Systematizing or computerization the business done by human Reappearing the idea known to public on computer screen Design modification base on the fact known to public or common practice Applying to other specific field

KIPO-SIPO JPAS(24-JAN-2008) 17/21 Obviousness (continued)

KIPO-SIPO JPAS(24-JAN-2008) 18/21 Requirement for Claims Method Claim Specifying steps Device (Apparatus) Claim Specifying to means plus functions Claims for Computer program ~ Computer program (x) ~ Computer program product (x) ~ Computer program code (x) ~ Computer program list (x), source code (x) ~ Data structure (x) ~ Data signal (x), ~ Program signal (x)

KIPO-SIPO JPAS(24-JAN-2008) 19/21 Requirement for Claims (Program) Computer program to itself not being permitted Claims of computer readable medium Computer-readable medium storing program for performing step A, step B, step C, ∙∙∙ in computer Computer-readable medium storing program for functionalizing mean A, mean B, means C, ∙∙∙ Computer-readable medium storing program for embodying function A, function B, function C, ∙∙∙ in computer Claims of medium recording data Contents of computer processing being specified by recorded data structure Computer-readable medium storing data having structure A, structure B, structure C.

KIPO-SIPO JPAS(24-JAN-2008) 20/21 Requirement for Detailed Description Requirement for Enablement Detailed description should be described with clearness and in detail so that a person in the computer-related art with ordinary skill can embody the invention related to claims based on the description of the detailed description and figures as well as the claims Examples of violation Meaning of a wording is not clear Invention is described abstractly Invention is described by only simple functional block diagram or outlined flowchart Correspondence between function of claim and the detailed description is not clear

21 Thank you For more information