Comment on the Konno and Zumwalt Articles

Hajime YAMADA (Professor, Toyo University)

In connection with Professor Konno's criticism against the "American standard" for patent business and Mr. Zumwalt's emphasis on US-Japan cooperation in this area, I would like to draw your attention to the Trilateral Project undertaken by the European, Japan, and U.S. Patent Offices. In 2000 these offices published a study report on business model patents. See:http://www.uspto.gov/web/tws/b3b_start_page.htm.

They summarized the report as follows:

The consensus among the Trilateral Offices resulting from this comparative study on computer implemented business methods is that
(1) A technical aspect is necessary for a computer-implemented business method to be eligible for patenting.
(2) To merely automate a known human transaction process using wellknown automation techniques is not patentable.

They also exchanged views on prior art searching. For example, "Taking into account the above-mentioned situation, it can be said that this study raised a challenge as to how to carry out a higher-quality of search for business method related inventions. In this regard, and taking into account the EPO views on examination in this area (Appendix 6), the Trilateral Offices should focus, as a next stage, on collaboration of searching prior art in this field in the framework of Trilateral cooperation."

It is very important to encourage such activities to further harmonize patent examination systems globally. This is the way to resolve Professor Konno's concerns.