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Legislative Implementation of Flexibilities - Japan

Title:Article 2 (3) and (4) of the Patent Law No. 121 of 13/04/1959, as last amended by Act No. 63 of 2011
Field of IP:Patents
Type of flexibility:Patentability or exclusion from patentability, of software-related inventions
Summary table:PDF

Provisions of Law

2. Definitions

(3) "Working" of an invention in this Law means the following acts:

(i) in the case of an invention of a product (including a computer program, etc., hereinafter the same), manufacturing, using, assigning, etc. (assigning and leasing and, in the case where the product is a computer program, etc., including providing through a telecommunications line, hereinafter the same), importing or offering for assignment, etc. (including displaying for the purpose of assignment, etc., hereinafter the same) thereof;

(ii) in the case of an invention of a process, the use thereof; and

(iii) in the case of an invention of a process for manufacturing a product, in addition to the action as provided in the preceding paragraph, acts of using, assigning, etc., importing or offering for assignment, etc. the product manufactured by the process.

(4) A "Computer program, etc." in this Law means a computer program (a set of instructions given to an electronic computer which are combined in order to produce a specific result, hereinafter the same in this subsection) and any other data that is to be processed by an electronic computer equivalent to a computer program.

EXAMINATION GUIDELINES FOR PATENT AND UTILITY MODEL

1.1.1 Categories of Software-Related Inventions

(1) Invention of a process

When a software-related invention is expressed in a sequence of processes or operations connected in time series, namely procedure, the invention can be defined as an invention of a process (including an invention of a process of manufacturing a product) by specifying such a procedure.

(2) Invention of a product

When a software-related invention is expressed as a combination of multiple functions performed by the invention, the invention can be defined as an invention of a product by specifying such functions.

A program or data can be defined in the following manners:

(a)"A computer-readable storage medium having a program recorded thereon" can be defined as "an invention of a product." "A computer-readable storage medium having structured data recorded thereon" can also be defined as an invention of a product, where processing performed by a computer is specified by the data structure recorded thereon.

(b)"A program" which specifies a multiple of functions performed by a computer can be defined as "an invention of a product."

2. Requirements for Patentability

This section explains requirements for patentability, statutory invention and inventive step which are particularly important in examining patent applications for software-related inventions.

However, it is not necessary to refer to this chapter when it can be judged based on "Part II: Chapter 1," whether the claimed invention qualifies as a statutory invention.

2.1 Inventions ruled by Patentability Requirements

(1) Patentability requirements are applied to "claimed inventions".

(2) The claimed invention is identified on the basis of the statement in a claim. In this case, the significance of matters (terms) to define the invention is interpreted taking into consideration the descriptions of the specification, drawings and the common general knowledge as of the filing.

2.2 Statutory Invention

To be qualified as a "statutory invention" prescribed in the Patent Act, the claimed invention shall be "a creation of technical ideas utilizing a law of nature." (See Part II: Chapter 1, 1)

2.2.1 Basic Concept

The basic concept to determine whether software-related invention constitutes "a creation of technical ideas utilizing a law of nature" is as follows.

(1) Where "information processing by software is concretely realized by using hardware resources," the said software is deemed to be "a creation of technical ideas utilizing a law of nature." (See 3. Examples 2-1 to 2-5 in this Chapter.)

2.2.2 Actual Procedure for Judgment

The actual procedure to judge whether a software-related invention is "a creation of technical ideas utilizing a law of nature" (statutory invention) or not is as follows.

(1) Identify the claimed invention based on the definitions in a claim. When the identified invention does not require special judgment and treatment for software-related inventions in judging whether the claimed invention constitutes "a creation of technical ideas utilizing a law of nature," "Part II: Chapter 1. ‘Industrially Applicable Inventions'" shall be referred to. (Note*)

(2) Where information processing by software is concretely realized by using hardware resources (e.g. an arithmetic unit such as a CPU, a storage means such as memory) in the claimed invention, in other words, when information processing equipment (machine) or its operational method particularly suitable for the use purpose is constructed by concrete means in which software and hardware resources are cooperatively working so as to include arithmetic operation or manipulation of information depending on the said use purpose, the claimed invention constitutes "a creation of technical ideas utilizing a law of nature."

(3) Where information processing by software is not concretely realized by using hardware resources, the claimed invention does not constitutes "a creation of technical ideas utilizing a law of nature."

2.2.3 Notes

(1) It should be noted that the invention to be judged is the claimed invention. Therefore, even if an invention wherein "information processing by software which is concretely realized by using hardware resources" is described in the detailed description of the invention or drawings, when the same effect is not stated in a claim, the claimed invention is deemed as "non-statutory."

(2) Even if the current claimed invention does not constitute "a creation of technical ideas utilizing a law of nature," when it can be turned into "a creation of technical ideas utilizing a law of nature" by amending the definition of the claim on the basis of the statements in the detailed description of the invention, it is recommendable that the examiner suggest how to amend the definition of the claim simultaneously when notifying the applicant of the reason for refusal.

(3) It should be noted that the judgement whether the claimed invention is "a creation of technical ideas utilizing a law of nature", should be made interpreting the significance of the matters (terms) to define the invention noting that the category of the invention is irrelevant ("an invention of a process" or "an invention of a product").

(4) When a claimed invention is sought for "a program language" so that it is deemed to be an artificial arrangement, it is not "a creation of technical ideas utilizing a law of nature." (See Part II: Chapter 1, 1.1 (4))

(5) When a claimed invention is sought for "program listings" so that it is deemed to be a mere presentation of information, it is not "a creation of technical ideas utilizing a law of nature." (See Part II: Chapter 1, 1.1 (5)(b))

2.2.4 "Structured Data" or "Data Structure"

"Structured data" (including "a computer-readable storage medium having structured data recorded thereon") or "data structure" should be judged based on "2.2.1 Basic Concept" in this Chapter.

2.3 Inventive Step (Nonobviousness)

2.3.1 Basic Concept

(1) Whether or not a claimed invention involves an inventive step is determined whether the reasoning that a person skilled in the art could have easily arrived at a claimed invention based on cited inventions can be made by constantly considering what a person skilled in the art would do after precisely comprehending the state of the art in the field to which the invention pertains as of the filing. (See Part II: Chapter 2, 2.4 (1))

(2) Concretely, after finding the claimed invention and one or more cited inventions (Note*), one cited invention most suitable for the reasoning is selected. And comparison of the claimed invention with the cited invention is made, and the identicalness and the difference in matters defining the inventions are clarified. Then, the reasoning for lacking an inventive step of the claimed invention is attempted on the basis of the contents of the selected invention, other cited inventions (including well-known or commonly used art) and the common general knowledge. The reasoning can be made from various and extensive aspects. For example, the examiner evaluates whether the claimed invention falls under a selection of an optimal material, a workshop modification of design, a mere juxtaposition of features on the basis of cited inventions, or whether the contents of cited inventions disclose a cause or a motivation for a person skilled in the art to arrive at the claimed invention.

(Note*) Since the invention should be viewed as a whole, it is inappropriate to identify the claimed invention separating the aspect of artificial arrangement and that of automation technique.

(3) If advantageous effects of the claimed invention over a cited invention can be clearly found in the description in the specification, etc., it is taken into consideration as facts to support to affirmatively infer the involvement of an inventive step. (See Part II: Chapter 2, 2.4(2))

(4) When the reasoning can be made as a result of the above method, the claimed invention should be denied its inventive step. When the reasoning cannot be made, the claimed invention should not be denied its inventive step. (See

Part II: Chapter 2, 2.4(2))

(5) Attempts are usually made in the field of software technology to combine methods or means used in different fields or apply them to another field in order to achieve an intended object. Consequently, combining technologies used in different fields and applying them to another field is usually considered to be within the exercise of an ordinary creative activity of a person skilled in the art, so that when there is no technical difficulty (technical blocking factor) for such combination or application, the inventive step is not affirmatively inferred unless there exist special circumstances (such as remarkably advantageous effects).

2.3.2 Problems to be solved by the Invention

The problems in connection with "software-implementation" or "computerization" are often mere general problems common to such computer technologies. "In order to improve the level of decision by using AI (Artificial Intelligence) or Fuzzy Logic," or "in order to make input –operation easier by using GUI (Graphical User Interface)" are examples of such problems to be solved by the invention. The judgement of "inventive step" should be made taking into consideration these generally known problems as of the filing.

2.3.3 A Person having Ordinary Skill in the Art

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; and to be able to comprehend all the state of the art in the field of technology to which the

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