While Alice v. CLS Bankcorp has touched off a firestorm of confusion in the patent community about what constitutes patent eligible software in the United States, our colleagues in Japan seem to be enjoying relative harmony (和) with their patent system.
Let’s take a look at the Japanese requirements for patent eligibility and see how computer software that implements business methods is viewed.
In Japan, discussion concerning implementing patentability of business methods took place in 2000 and, as a result, the Patent Law of Japan was
revised to accommodate these types of inventions. Based on these revisions, the Japan Patent Office issued a guideline to Examiners to follow when using the new rules.
Our analysis begins with the main paragraph of Article 29(1) of the Patent Act, which states that any person who has made an inventionwhich is industrially applicable may obtain a patent. “Invention” is defined in Article 2(1) as “the highly advanced creation of technical ideas utilizing the laws of nature.” Here, the term “highly advanced” distinguishes inventions from the subject of registrable utility models. Moreover, Art 29(1) provides two requirements for the patentability of subject matter in Japan as:
- A statutory “invention.” The subject matter must be a “creation of a technical idea utilizing a law of nature” in order to be patent eligible.
- Industrial Applicability of the Invention. The subject matter must not be a method of surgery, therapy or medical diagnosis of humans; commercially inapplicable (e.g., method of petting my cat); and an impossible or impracticable invention (e.g., covering the earth’s surface with UV absorbing material to prevent global warming).
Subsection 2.2(1) specifically addresses the patent eligibility of business methods and provides that for business methods, games and mathematical formulae “where the invention is made having an intention of utilizing computer software (such as software used in doing business) in playing a game or in calculating a mathematical formula as a whole,” the Examiner must evaluate the subject matter from a viewpoint of computer software in order to determine whether the subject matter as a whole can be considered patent eligible as a “creation of a technical idea utilizing a law of nature.” Subsection 2.1 lists subject matter areas that are not considered the “creation of a technical idea utilizing a law of nature” and therefore are not patent eligible statutory inventions:
- A law of nature as such (e.g., F=ma)
- Mere discoveries and not creations (e.g., finding the Higgs Boson)
- Those contrary to a law of nature (e.g., perpetual motion)
- Those in which a law of nature is not utilized, such as any laws other than a law of nature (e.g., economic laws); arbitrary arrangements (e.g., a rule for playing a game as such); a mathematical formula; mental activities of humans; and those utilizing only methods for doing business as such
- Those not regarded as technical ideas (e.g., personal skills, information compilations and aesthetic creations)
- Those for which it is clearly impossible to solve the problem to be solved by any means presented in a claim (e.g., extinguishing a volcano by applying neutron absorbing Boron)
And… that’s it!
Compared to the ever growing litany of case decisions, USPTO guidelines and Director’s Letters, the above statutory scheme is a concise, self-contained and a well thought out roadmap for analyzing patent eligibility. But how will it work in practice when a Patent Examiner reviews an application?
A Patent Examiner in Japan is likely to look carefully at claims to computer software that implements any of the excluded factors of those referenced above. The guidelines indicate that the Examiner should evaluate the claim as a whole. Further, the Examiner must view the claim from the standpoint of being implemented by a computer executing software. But how would an Examiner proceed in the event that a claim includes one of the excluded factors, but also includes some technical content? Most likely, the Examiner will balance the technical aspects of the claim against the ineligible aspects of the claim in an attempt to effectuate the spirit of the submission.
So… the best guidance we can provide in determining whether a claim is directed to computer software implementing a business method patent eligible in Japan is to look at whether the claimed as a whole implements a technical idea that utilizes a law of nature.
¡ Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 U.S. Sup. Court (2014)
¡¡ “Examination Guidelines for Patent and Utility Model in Japan” English translation provided by Japan Patent Office, quoting “Eligibility for Patent and Industrial Applicability” Article 29(1) of the Patent Act.