Patent Eligibility

I. Definition of “Invention” in Japan

Unlike other jurisdictions, an invention is defined as “a creation of a technical idea utilizing laws of nature” under Japanese Patent Law.  From this definition, the following matters are excluded.

  • Laws of nature as such (ex. law of universal gravitation)
  • Mere discovery but not creation (ex. natural products as such)
  • Concepts that contradict the laws of nature (ex. perpetual motion machine)
  • Concepts in which laws of nature are not utilized
  • Concepts which are not technical ideas (ex. The mere presentation of information)
  • Concepts which obviously cannot solve the problem for which they were conceived.

    Here are examples of concepts in which laws of nature are not utilized.

    1. Laws which are not laws of nature (ex. laws of economy)
    2. Artificial arrangements (ex. rules of games as such)
    3. Mathematical formulas
    4. Mental activities of humans
    5. Concepts utilizing only (i) to (iv) (ex. business methods as such)


    It should be noted that although business methods per se are defined as not utilizing laws of nature, they are patentable as Computer Software (CS) inventions.

II. Eligible Categories for CS Inventions

CS inventions can be recited using the following categories.

  • Method
  • Computer readable storage medium
  • Computer program
    1. module, library
    2. neural network, support vector machine, trained model
  • Information equivalent to a computer program
    1. data structure, data having structures

A “computer program” and its equivalent (such as neural network) (as an intangible object) are deemed to be a “product” under Japanese Patent Law, and an act of providing (or offering for provision) a computer program, etc. through the Internet is deemed to be working of patented invention,

III. Requirements for Satisfying the Utilization of Laws of Nature in CS Inventions

  • Software obviously utilizing the laws of nature
    1. Software that concretely performs control of an apparatus (e.g., rice cooker, washing machine, engine, hard disk drive), or processing related to the control
    2. Software that concretely performs information processing based on technical properties such as physical, chemical, biological or electrical properties of an object
  • Requirements applied to computer software inventions other than the above
    1. Information processing by software concretely realized using hardware resources (so-called H/W and S/W collaboration requirements)

Business inventions are examined in the manner of B).

IV. Judicial Case

Japanese Patent No. 5,946,491 was registered in June 2016.  However, an Opposition was filed and the JPO eventually revoked the patent despite corrections being made.  The Patentee filed an Appeal against the Decision of Revocation, and the IPHC finally judged that the Decision of the JPO should be cancelled.

Maintained Claim 1 is as follows (the bold portion indicates the correction that was made).

A system for providing steaks, comprising:

guiding a customer to a buffet-style table;

asking the customer about the quantity of steak which the customer wants;

cutting the desired quantity of steak from a block of meat;

grilling the cut meat; and

bringing the grilled meat to the customer's table,

wherein the system comprises:

a label describing a customer's table number,

a scale for weighing the cut meat, and

a mark for distinguishing the cut meat from other customers' meat, and

wherein a sticker on which the quantity of the meat and the table number are printed is output, and the mark is the sticker.

The JPO argued that the essence of the invention is a business method itself and that how to use the objects (label, scale, and sticker) to achieve the purpose is merely recited.  However, the IPHC judged that three of the objects are technical means to solve the problem (“providing a preferable amount of steak at a cheap price”) due to the effect (“distinguishing a customer's meat from that of other customers”) introduced by the objects.

Amongst experts in the field, there was criticism against the IPHC regarding the judgement and support for the JPO's decision, but please be informed that that kind of invention was granted in Japan.

V. Important Points

The following points should be considered when determining the patent eligibility of software-related inventions.

  • Patent eligibility is examined as a whole

    Even if some hardware resources are specified in the claims, patent eligibility might not be satisfied, and vice versa.  The examination will be performed based on recognition of the essence of inventions.
  • Specific embodiments are very important

    As indicated above, patent eligibility is not satisfied when only business roles are recited in the claims. In particular, the specific embodiments in the specification of business related inventions tend to be poor because the essence of idea may a business method.  It should be understood that how the business idea is concretely realized should be protected instead of the idea itself.

Patent Enforcement

I. Current Situation

As shown in the following chart, Japanese courts used to be very strict for patentees of CS inventions.  This trend may be due to the scope of the claims being interpreted in a narrower manner in the courts, and file wrapper estoppel during the examination was effective.

 

Success Rate

Period

District Court (all technical fields)

21.7% (102/468)

2004 to 2014 (*1)

IP High Count (all technical fields)

18.1% (37/204)

CS Cases

3.9% (1/51)

2000 to 2017 (*2)

(*1) https://www.kantei.go.jp/jp/singi/titeki2/tyousakai/kensho_hyoka_kikaku/tf_chiizai/dai3/siryou03.pdf

(*2) Lee, et. al (2018)

However, the number of patent infringement litigation cases for business-related inventions has been increasing since 2016 and cases are recently more apt to be ruled as infringing.  It seems that the JPO's interpretation of the scope of such claims has become more neutral.

II. Law Revisions

Generally, patent enforcement in CS inventions is very difficult.  If the claims include internal operations of software, it was difficult for patentees to prove infringement because they cannot obtain the source code.  In addition, Japan does not have a discovery system like in the U.S.  However, the system of On-site Investigation by Experts has been introduced since 2020 by a law revision.  Under this system, the court can designate neutral technical experts and order them to visit the alleged infringer's site in order to collect evidence of the infringement and file a report thereof.  The system may be advantageous for patentees.

Conclusion

Japan has become one of the most pro-patent countries in prosecution in the world in regard to obtaining a broad scope of protection and patent eligibility.  On one hand, the enforcement of patent rights was very difficult, in particular, in the field of CS inventions.

However, the situation has been changing for the better in view of current court judgements, and we are happy if you are interested in filing applications in Japan.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.