Software-Related Patents:
Japan
copyright 1996, 1998 Donald M. Cameron, Aird & Berlis
produced with the assistance of Yoshikazu Tani of Tani & Abe of Tokyo
revised March, 1998
Contents
Statutes
There is no express provision in the Japanese Patent Law concerning the patentability of computer software.
In Japan, the application of a scientific principle is a prerequisite to patentability. Statutory subject matter includes as inventions "any highly advanced creation of technical ideas by which a physical law of nature is utilized". (2)
Where the data processing is based on the physical or technical properties of an object, the data processing is deemed to be an invention using a natural law. On the other hand, where the data processing is based on an economic law, commercial method or mathematical formula, such inventions are deemed as not using natural laws.
Statutory subject matter is determined by what is claimed rather than by what is disclosed.
Regulations
The following process is used to judge whether an invention utilizes natural laws in a software related invention:
(a) Identify the claimed invention based on the description in the claim;
(b) The invention is non-statutory if it is classified into one of the following categories:
- natural law per se
- mere discovery
- violating natural laws
- laws other than natural laws/utilization of such laws
- technique
- mere presentation of information
- mere artistic creation
- means for solving a problem which clearly cannot solve the problem
(c) If the invention is not classified as non-statutory, then determine the problem being solved and the means used to solve the problem. If the means for solution utilizes natural laws, then the claimed invention is judged to be statutory.
Examples of statutory subject matter:
- Controlling hardware resources/processing in connection with controlling. Control systems which control a hardware resource (including a computer or part of one) are deemed to use a natural law and are patentable. The use of hardware in a claimed invention will in many cases result in a patentable invention except where the use of hardware is ancillary. For example, the addition of hardware to the solution of a formula does not utilize a natural law ("mere use of a hardware resource").
- Information processing based on the physical or technical properties of an object
- Processing by utilizing hardware resources The claim should recite how to use the hardware resources. Mere data gathering or insignificant post solution activities will not suffice to make a claim statutory.
Computer programs per se, programming languages and program listings are non-statutory. However the new Implementing Guidelines consider as statutory "a recording medium having a program recorded therein", with technical features in the medium.
A program or programming language is not a patentable invention. Computer programs, mathematical methods and methods of doing business are examples of things that do not utilize natural laws.
1997 Implementing Guidelines
The Japanese Patent Office ("JPO") issued examination guidelines for computer software related inventions in December, 1975 and supplemented them in December, 1982 and January, 1989. In June 1993, the JPO issued a Standard for Patent Examination which replaced the former guidelines including those specifically relating to computer software related inventions. In February, 1997, new Implementing Guidelines were issued.
The claimed invention is considered as a whole. There are three primary requirements
for patentability.
Application of a Scientific Principle Requirement
If this "cause and effect" relationship is linked by a law of nature, then the
subject matter is statutory. If the relationship is a mathematical formula only, then the
subject matter is not statutory. Thus, inventions based on human mental activities are
nonstatutory.
Industrial Applicability Requirement
The invention must also have industrial applicability in order to be patentable. (3)
Inventiveness Requirement
The guidelines also deal with the inventiveness required for software related inventions.
The general standard under Japanese law asks whether those skilled in the art could easily
conceive of the claimed invention. The prior art must have the same cause or motivation
for the claimed invention and have the same advantages in order to be effective at
negating inventiveness. Inventiveness is not provided where a function (such as a data
retrieval function) is simply transferred to a new technical field. Likewise converting
firmware to software also lacks inventiveness.
The computerization of a job performed by humans also lacks inventiveness. The speeding up
of a process by using a computer also lacks inventiveness.
Disclosure
The disclosure should include alternative embodiments.
except for "pioneering" inventions, the disclosure should state the "technical field to which the invention pertains", "the problem to be solved by the invention"and "its solution".
Drawings should be used to complement the disclosure. Functional descriptions should be supplemented with hardware descriptions and flowcharts. The flowchart should be as detailed as possible: an outline flowchart and a detailed flowchart should be used. The application of subroutines and modules should be described. Data flows or timing charts may be used with the flow charts.
Other tips:
- Explain how the steps or means plus functions are performed or embodied in the hardware and/or software.
- Explain how the the steps of instructing the computer are executed by the software with reference to the flowchart showing the outline of the software.
- Explain the structure of the hardware or software that realizes the function.
- Clearly and fully explain the relationships of the means-plus-function elements of the claims with the flowcharts.
- For software-related inventions, be sure that the description is enabling in that it includes a specific or concrete means to carry out the invention.
- It is recommended that program listings not be submitted: it will not likely assist the Examiner in understanding the invention. It may disclose know-how unnecessarily to the public. A pseudo code listing should be included as part of the specification, if it is easily explained and includes a portion substantially related to the invention.
- For software related inventions, the industrial applicability must be concretely and clearly explained. The relationship between the algorithm and the effects or operations should be stated.
- The hardware arrangement of the apparatus to which the software is applied, the specific functions of the computer and the relationship between them should be fully disclosed in the original specification to allow flexibility for future amendments.
- Explain technical words and abbreviations which are not commonly known. These definitions should be attached at the end of the specification as a supplementary index.
Claims
The claims must be expressed in terms of a product or a process. Claims cannot be expressed a s a mixture of a product and process claims.