Патентоспособность бизнес-методов в Украине
Mariya Ortynska, patent attorney, Patent Law Company IPStyle
In different countries patentability of business methods has always been the subject of controversy. Ukraine is not exception of this rule. Patenting business methods offers huge advantages and exert growing influence on everything. That's why many Ukrainian and foreign applicants try to file patent applications concerning business methods. In Ukraine most of these applications are denied by Ukrainian Patent Office.
Let's look at the main causes of failure of such patent applications. According to article 1 of Law “On the Protection of Rights to Inventions and Utility Models” “Invention (utility model)” means a result of intellectual activity of a human being in any field of technology”. The keyword of this definition is “technology” and the key question is whether business methods refer to result in any field of technology.
According to Rules of drafting and filling application for invention and application for utility models approved by Order of Ministry of education and science in Ukraine N 22 dated 22.01.2001 (hereinafter Rules) methods of intellectual, economic, organizational and business activity (planning, financing, procurement, accounting, credit, forecasting, valuation, etc.) are is not inventions (utility models) in the meaning of Ukrainian law.
Main problem in above mentioned Rules is that there is no clear definition of methods of such activities. So sometimes it is difficult to unequivocally deсide whether methods refers to business method. On the other hand, applicants could use this rule in their favor – to present their business method as method of technology.
To understand what object is patentable let's analyze definition of object of an invention. According to article 6 of Law “On the Protection of Rights to Inventions and Utility Models” invention (utility model), to which the legal protection is granted under this Law, maybe:
So in Ukraine we could patent method if we could represent it as a process in the meaning of Rules. For example, we need to patent an internet business method. Of course idea of this method is not patentable. But we could obtain patent if we claim method of internet business which consists of actions performed on products and other tangible objects with at least one product and to achieve a technical result. As tangible objects can be hardware-software complex, input-output devices and others. Also result of such method must be technical. Frequently, applicants can represent their method as technical method, but it is very difficult to represent technical result.
In the meaning of Rules the technical result means new understanding properties or improvements of known properties of the object of the invention (utility model), which can be obtained at the invention (utility model). Technical result can be expressed, for example, reducing or increasing turnovers on the period, decreasing or increasing coefficient of friction, increasing or decreasing the frequency or amplitude fluctuations in reducing perverse signal, structural transformation during crystallization so on.
In such cases it is possible to patent not a business-methods, for example, methods of providing insurance services, but methods for doing business, for example, a process of data processing during providing insurance services.
Also patentable object and technical result are not guarantee of granting a patent in Ukraine. According to Article 6 of the Law “On the Protection of Rights to Inventions and Utility Models” the legal protection will be granted to an invention (utility model) that does not contradict the public order, humanity and morality and complies with the requirements of patentability. And according to article 7 of above mentioned law an invention meets the patentability requirements provided that it is new, involves an inventive step and is industrially applicable, and a utility model meets the patentability requirements provided that it is new and industrially applicable.
So, in some cases it is possible to patent a method like to business method in Ukraine. For instance, in Ukraine were granted many patents of methods of advertising, methods of providing information services and others.
In different countries patentability of business methods has always been the subject of controversy. Ukraine is not exception of this rule. Patenting business methods offers huge advantages and exert growing influence on everything. That's why many Ukrainian and foreign applicants try to file patent applications concerning business methods. In Ukraine most of these applications are denied by Ukrainian Patent Office.
Let's look at the main causes of failure of such patent applications. According to article 1 of Law “On the Protection of Rights to Inventions and Utility Models” “Invention (utility model)” means a result of intellectual activity of a human being in any field of technology”. The keyword of this definition is “technology” and the key question is whether business methods refer to result in any field of technology.
According to Rules of drafting and filling application for invention and application for utility models approved by Order of Ministry of education and science in Ukraine N 22 dated 22.01.2001 (hereinafter Rules) methods of intellectual, economic, organizational and business activity (planning, financing, procurement, accounting, credit, forecasting, valuation, etc.) are is not inventions (utility models) in the meaning of Ukrainian law.
Main problem in above mentioned Rules is that there is no clear definition of methods of such activities. So sometimes it is difficult to unequivocally deсide whether methods refers to business method. On the other hand, applicants could use this rule in their favor – to present their business method as method of technology.
To understand what object is patentable let's analyze definition of object of an invention. According to article 6 of Law “On the Protection of Rights to Inventions and Utility Models” invention (utility model), to which the legal protection is granted under this Law, maybe:
- a product (device, substance, microorganism strain, plant or animal cells culture etc.);
- a process (method) as well as the novel use of a known product or process.
So in Ukraine we could patent method if we could represent it as a process in the meaning of Rules. For example, we need to patent an internet business method. Of course idea of this method is not patentable. But we could obtain patent if we claim method of internet business which consists of actions performed on products and other tangible objects with at least one product and to achieve a technical result. As tangible objects can be hardware-software complex, input-output devices and others. Also result of such method must be technical. Frequently, applicants can represent their method as technical method, but it is very difficult to represent technical result.
In the meaning of Rules the technical result means new understanding properties or improvements of known properties of the object of the invention (utility model), which can be obtained at the invention (utility model). Technical result can be expressed, for example, reducing or increasing turnovers on the period, decreasing or increasing coefficient of friction, increasing or decreasing the frequency or amplitude fluctuations in reducing perverse signal, structural transformation during crystallization so on.
In such cases it is possible to patent not a business-methods, for example, methods of providing insurance services, but methods for doing business, for example, a process of data processing during providing insurance services.
Also patentable object and technical result are not guarantee of granting a patent in Ukraine. According to Article 6 of the Law “On the Protection of Rights to Inventions and Utility Models” the legal protection will be granted to an invention (utility model) that does not contradict the public order, humanity and morality and complies with the requirements of patentability. And according to article 7 of above mentioned law an invention meets the patentability requirements provided that it is new, involves an inventive step and is industrially applicable, and a utility model meets the patentability requirements provided that it is new and industrially applicable.
So, in some cases it is possible to patent a method like to business method in Ukraine. For instance, in Ukraine were granted many patents of methods of advertising, methods of providing information services and others.
