monograph relates to invention eligibility in Japanese intellectual property
field. Further intellectual
property of data is referred.
is derived, focusing on invention eligibility, from my work (Japanese language) "A consideration on the eligibility of
an invention triggered by the intellectual property high court decision
on the data structure recording medium" published in the" patent
magazine" issued by the Japanese Patent Attorneys
Association(JPAA) (December, 2015) .
For accessing to this my work itself, you can open by clicking this link part.
Table of contents
1. Current state of the invention eligibility discussion of each country
2. Invention eligibility etc. about each type of target of the invention (idea)
Natural phenomenon, natural products
Artifacts (including things that change)
Device for processing/carrying Information
A. Device that deal with " information on
matter" being to be processed by machine
Information processing device
ex. Computer (information processing
ex. Video player, Karaoke playback
(2) Information carrier for information
ex. Computer program recording
ex. Computer data structure recording
ex. Video data recording medium
B. Device that deal with " information on
matter" being to be directly recognized
by human (information carrier for human)
ex. Book, calendar
1. Current state of discussion by each country on the eligibility of invention
Considering the recent US judgements,
the State Street Bank judgment, which
widely acknowledged the invention's eligibility (protection
eligibility), was restricted by the Bilski judgment and further limited by
recent Prometheus judgment and Alice judgment ( 2).
these judgements and the revised edition of the examination provisional
guidance of the USPTO submitted later (December 2014), under the US Patent Act
Article 101 (invention eligibility), natural law, natural phenomenon, abstract
idea (for example , foundation of economic practices, certain ways of planning
human activities, ideas themselves, mathematical relationships / formulas) ,themselves
do not have invention eligibility.
is that ideas including or directed to them are not protected elsewhere, unless
they are significantly more than them (inventive concept).
In Prometheus judgment, the reasons
to be handled under Article 101 of the law for the issue, are explained as
follows. Leaving it to article 102 (novelty) or 103 (obviousness) brings about
great uncertainty. That is, articles 102 and 103 are presupposed to contrast
with the existing prior art.
However, in the
case of natural phenomena, natural phenomena, and abstract ideas, there are
such cases that prior arts cannot be found, and in such cases, there is concern
that these articles will not lead to appropriate conclusion (3).
However, even if
it is so, it can be said that there is such a big drawback that the criteria of
"significant more" is very
ambiguous. There is a lot of problem in using such concept similar to the inventive
step judgement (article 103) without any references.
In Article 52 (1),(2), (3) of EPC,
(1) European patents shall be granted for any inventions, in all fields of
technology, provided that they are new, involve an inventive step and are
susceptible of industrial application.
(2)The following in particular shall not be regarded as inventions within
the meaning of paragraph 1:
(a)discoveries, scientific theories and mathematical methods;
(c)schemes, rules and methods for performing mental acts, playing games or
doing business, and programs for computers;
(d)presentations of information.
(3)Paragraph 2 shall exclude the patentability of the subject-matter or activities
referred to therein only to the extent to which a European patent application
or European patent relates to such subject-matter or activities as such.
in the case where it is not itself, initially it was said that contribution to
known prior technology must be technological property in order to be accepted
as an invention (4), but it was said that in some trial decisions, novelty- like
elements such as comparison with the prior art should not be introduced on the
eligibility judgement, and the eligibility requirement was relaxed as such that
no further technical contribution is required.
in principle, examination way for inventive step has changed as only technological
features are considered (5).
Regardless of whether it is intended or
not, it seems that the stage is shifted from the invention eligibility
requirement to the inventive step requirement, and the above-mentioned concern
of the US discussion is avoided in principle by ignoring the non-technical
However, this European discussion
has the drawback that it is hard to understand definitely the meaning of
important keywords "technology", "non-technology",
"interaction between technology and non-technology".
According to the development of IT
technology the definition of technology tends to expand (6), and the boundary
between technology and non-technology is blurred. For example, is an encryption
device really technology?
The information technique is based
on only such rule humans decided (7).
Also, even if it is limited to inventive
step judgment, if it is assumed that it is deemed not to be written despite
being apparently described in the scope of claims, it is too violent and in
order to treat such extreme dealing, I think that such should not be on a
guideline or a trial decision but on a legal basis like the statement of the European
Patent Convention. The problem is significant.
In Japan, based on Article 2 of the
Patent Law, "Invention is highly advanced creation of technical ideas
using law of nature", the eligibility requirement of the invention is
judged mainly with or without the use of law of nature.
In 1993 (Heisei 1993) revision examination standards, such is described that "even
if there is a part that does not use the law of nature in the constitution of
the claimed invention, when it is judged that the invention according to the
claims as a whole uses the law of nature, it becomes that the invention use the
law of nature.
Whether to use the law of nature as a
whole will be judged in consideration of the characteristics of the technology."
Such is succeeded in the existing examination
Determination of the invention eligibility etc. for each type of target of the
As described above, each way of the
United States and Europe has its own difficulties. The reason that the
difficulty comes out is that in the United States, despite the heterogeneity of
natural phenomena, mental activity, software, etc., it is trying to handle by such
uniform judgment that they do not admit eligibility if they do not apply to the
extent of "significantly more", and in Europe, regarding applied inventions
for such as scientific theory, mathematical method, mental activity, etc.,
although they are heterogeneous to each other, they are bundled up with
non-technology field , and is handled by such a uniform criteria in judgment of
However in Japan, on the other hand, it
is said that "to judge by considering the characteristics of the
technology" as described above, and there seems to be a direction to avoid
uniform judgment (for example, regarding computer / software related invention and
biological related inventions, two examination standards are prepared for respective
specific technical fields (from October 1, 2015, the standards have moved to
the Annex to the Patent / Utility Model Assessment Handbook).
I interpreted this "thinking in considering the characteristics of
technology" as a way of avoiding uniform judgment, and I studied according
to this direction as described below.
In other words,
from the viewpoints of "matter and information", the target of the
invention (idea) are classified into several types, the eligibility of the
invention is judged for each type, and at the same time, the inventive step and
definiteness can be judged (In that case, depending on the type, lowering the
hurdle of the invention eligibility than before and covering with inventive
step and definiteness for it).
By the way, it
should be noted that the target of the invention (idea) is obviously this
world. Furthermore, "This world is composed of matter, energy and
information", says Norbert Wiener, a cybernetics expert (9).
believe that the target of the invention (idea) can be considered as this matter
and energy (including change (hereinafter referred to simply as "matter")
(10)) and information (11).
Furthermore, the matter can be classified into natural
phenomena and natural products and artifacts (including things that change).
Further, the information can be classified into such information appearing
as a mental activity (memory / thought) of a human and such information(hereinafter
referred to as " information on matter") existing in one united body on the matter as like a paper (record) or a computer (processing) (hereinafter
referred to as " device for processing/carrying Information ")
That is, the target
of the invention (idea) is : 1. Natural phenomena, natural products, 2. Artifacts
(including things that change), 3. Mental activity and 4. Device for
For each of these four types, the eligibility
of the invention, furthermore, inventive step, indefiniteness will be discussed.
Note that these types are independent
from "invention categories of products and methods" in the Patent
For example, in the type of
artifacts of 2-2., there may exist products category and process (method)
addition, although the actual invention is often a combination of several of
these four types, as will be described below, it can easily correspond on the
extension of the below consideration about the four types.
Because it is inherently impossible and
should not take up only a part of the claim on the stage of the eligibility judgement
and therefore if it is attempted to deal with the inventions of those
combinations on the invention eligibility, (since it is a judgment as to
whether or not the whole claim falls under the legal definition of the
invention), the magic word such as "as a whole" will appear.
in the United States, there is no choice but to make such a judgment that is
similar to inventive step judgment, without any citations.
other hand, if we judge with the indefiniteness criteria or the inventive step criteria
as below in this paper, when there is an indefinite part in a part of the
claim, the whole claim becomes unclear. And the inventive step criteria has
inherently various logics so as to handle the combination of invention, it is
easy to deal with even a combination of invention on the inventive step.
2-1. Natural phenomenon, natural products
In Japan, the
United States and Europe, natural phenomena (natural law), natural products
themselves do not have invention eligibility and this is common and reasonable.
regard to the application of the natural phenomenon, natural products, they are
In the United
States, invention eligibility (Article 101) is denied because it lacks
inventive concept unless additional features that certainly embody the
application of natural phenomena and natural products, are not described (12).
However, it is unclear as to what "additional features to be embodied
In Europe, in the
examination of the EP application corresponding to the patent application of
the Prometheus decision, the contents are taken up without judgment for technology
and non-technology, and it is regarded as having no inventive step because of known
theory of routine work (13).
In Japan, as
apparent from "colored carp breeding case" of the Tokyo High Court
ruling, if the applying is simple but the discovery is difficult to conceive,
it is considered reasonable to acknowledge the inventive step (14). Behind the
revolutionary discoveries there is usually huge investment and is in line with
the objective of the patent system (encouragement of invention) (15).
2-2. Artifacts (including things that change)
It is a matter created by a human, it is
an orthodox invention, and the eligibility of the invention can be affirmed.
stated 2-2 in the recent US theory, there are possibilities that artifacts may be
not considered as having the eligibility if it is mere applying of natural
phenomenon, natural products as described above, and it is concerned.
2-3. Mental activity
The mental activity itself does not use
the law of nature, and in both Japan, the United States and Europe, it is
common and reasonable to deny the invention eligibility for mental activity
However, about the
applied invention (combinations with other types) including the mental activity
in the claims, the countries do not necessarily agree with the reasons for the
denial. As one example of the applied invention of such mental activity,
business method invention is known.
The United States
has taken up as an abstract idea in the Bilski judgment and Alice judgment and
made it a problem in the eligibility of the invention, but it has the drawbacks
mentioned above (17).
In Europe in regard to applied
inventions, the part of business method, that is, the mental activity part is
ignored in principle as a non-technical part in judgment of inventive step, but
as an exception, If the mental activity part contributes to the technical
nature of the invention, it can be considered as an inventive step judgment (18).
In Japan, the "Interactive
dental care network case" of Intellectual Property High Court ruling, is
known as a judgment that covered the applying of mental activity, that is, the
case involves mental activity in the claims (19).
this ruling discussed the invention eligibility but does not refer to the
inventive step. Other judgements also discuss the mental activity as the
invention eligibility problem (20).
By the way, as far as the applied invention
(the combination with matter and computers and so on) including mental activity,
is using matter and computers, the hurdle of minimum utilization of natural law
has already been exceeded, and It can be that invention eligibility is
satisfied (the natural law utilization of the computer itself is explained in
the next 2-4. Device for processing/carrier information).
case, in the inventive step judgement the handling of the mental activity part
becomes a problem.
Q & A on examination practices of "business
related inventions" related to examination criteria in Japan (April 2003),
explains the inventive step of business related inventions.
That is, in response to the question 10
regarding the novelty/inventive step," in judging inventive step, rather
than judging whether or not the business method itself has inventive step, It
is judged whether or not the invention realized concretely by the business
method, has inventive step... ... the new business method does not have
possibility to become patent, but when the inventor concretely introduces the
new business method on the computer to realize and construct an information
processing apparatus etc., the judgment of inventive step is executed by
judging whether the information processing apparatus etc. is easily created or
not from known business method etc .. ".
From here, we can draw out the concept that
in the claim the part of the business method (ie the mental activity part) that
is not specifically realized in the information processing apparatus etc. is
not the basis for recognizing the inventive step.
case, in the case of applied inventions including mental activity, even if the eligibility
of invention is affirmed in Japan, in the inventive step judgment, when the
novel characteristic is only mental activity, the inventive step is denied
irrespective of difficulty of the content, and I think it is appropriate (21)
(22) (23). Mental activity is similar to that of Europe one.
for processing/carrying Information
As shown in the reference diagram above,
this device for processing/carrying Information can be classified into (A)
device that deal with " information on matter" being to be processed
by machine and (B) device
that deal with " information on matter" being to be directly
recognized by human (information carrier for human).
the device that deal with " information on matter" being to be
processed by machine can be classified into (1) Information processing device
and (2) Information carrier for information processing device(24).
A. a device
that deal with " information on matter" being to be processed by machine
(1) Information processing device
In the United States, mathematical
algorithms has of course no eligibility as such as abstract ideas themselves,
and furthermore about the applied inventions of computers, if they are simply applied
invention, they are not admitted to eligibility. However, as mentioned above
there is a defect that the meaning of "not simple application, namely effectively
more" is ambiguous (25).
Europe, computer programs themselves do not have the invention eligibility. With
respect to the applied invention in combination with the hardware, the eligibility
of the invention is relaxed, and in the determination of inventive step, it is
handled by technology / non-technology criteria (26).
as described above, there is a defect that the boundary between technology and
non-technology is ambiguous.
In Japan, regarding software related
inventions, when information processing by software is concretely realized
using hardware resources (hereinafter referred to as "concrete cooperation
with hardware resources"), the invention eligibility is accepted affirming
the utilization of natural law, in the examination standard and judgement etc. (27).
By the way, for the reasons to be
described below, I think that it is possible to treat the "concrete
cooperation with hardware resources" not as a judgment criterion of eligibility
requirement, but as definition requirement of invention of article 36 patent
The reasons are as follows.
the Tokyo High Court ruling on May 26, 1999 (Heisei 9 (gyoke) 206)), which is
quoted in the current examination standard for reference on the point that the
utilization of natural law as the requirement for eligibility of invention, there
is described as " technology is a concrete means for achieving a certain
purpose and it can be actually used ...", however It is not clear about
the utilization of the natural law.
Furthermore, in the Supreme Court ruling
on October 13, 1971 (Showa 49 (gyotu No. 107), cited by the Tokyo High Court
ruling , such described as "the technical contents of that (invention) should
be concrete and objective to such an extent that a person skilled in the art
can repeatedly carried out, thereby realizing the technical effect". Therefore
it is discussing whether invention is incomplete or or not, however it is hard
to interpret that it does directly refer to the existence of the utilization of
natural law (28).
the point that machines which are matter (substances / energy) controlled by
natural law, process the information, the hurdle of minimum natural law utilization
has already been exceeded, and the invention eligibility can be satisfied (29).
Further for the reasons below, the concrete
cooperation with hardware resources can be dealt with in the judgment of definiteness
requirements of the invention of Article 36 of the Patent Law.
That is, software related inventions
have essence on software (30).
the essence of the information processing of software is not the
electrochemical phenomenon but content of human thinking.
Therefore, human thinking contents and
information processing contents of the machine will become similar. However,
the machine is a machine that realizes the thought contents, to the last.
Therefore, as long as the claims insist
that the machine performs information processing, the cooperation with the
hardware resources such as the computation unit, the storage unit etc. should
be concretely described in the claim to the extent that it shows that it is not
a human's thinking activity itself,
cooperation with hardware resources is not specifically described to that
extent, there is possibility of such interpretation that about all or a part of
claim as if a human is present in the machine who thinks so. Therefore even if
the content of thought itself is clear, the invention should be judged as unclear
and it should be rejected with the definition requirement of the invention of
Article 36 of the Patent Law.
Therefore, I believe that the ground for
requesting concrete cooperation with hardware resources can be based on the definition
of the invention of Article 36 of the Patent Law (31) (32).
In addition, when the definition requirement
of the invention is satisfied, judgment of inventive step will be carried out
considering all contents of the description of claim without changing handling
depending on the type of data (33). In this respect it differs from European
(2) Information carrier for information processing
As a typical example, a computer program
recording medium is known, but judgment on the invention eligibility is different
in Japan, the United States and the Europe.
By the way, as far as this information
carrier utilizes matter, it is possible to affirm the minimum natural law utilization,
and the eligibility of the invention can be affirmed. Furthermore, it is judged
whether the invention is definite, and furthermore, in the case where it is definite,
it is judged whether there is an inventive step.
For example, in the computer program
recording medium, if there is room for interpretation of human mental activity
as described above, it is assumed that the invention is indefinite and it is definite
if there is no room for interpretation, and further the invention will be
checked by inventive step.
By the way, the recording medium
with the data structure can be an example of the information carrier for this
information processing device, and the eligibility of the invention can be accepted.
On top of that, in such case that "... it seems that only using the general
functions of a computer etc. is described at the using of the computer
etc.", in other words, in case that that the specific cooperation with
hardware resources is not described to an extent that there does not remain
room for interpretation of human mental activity, it can be rejected with the definition
requirement of the invention (34).
Also, movie DVDs and karaoke videos are
examples of this information carriers for this information processing device
B. Device that deal with "
information on matter" being to be directly recognized by human (information carrier for human)
calendars are examples of cases where the recognition is visual. Braille paper
is an example of a case where recognition is tactile.
In principle, the
invention eligibility is denied for the information carrier for humans
themselves in the United States, Europe and Japan.
However, even if it is an information
carrier itself for human, as it is a matter, the least natural law of nature is
utilized and the eligibility can be accepted.
In addition, the information carrier for
humans essentially requires human recognition activities in order to produce an
effect (36) (In the case of not accompanied by a human's recognition activity, it
is only a carrier with ink stains or with irregularities formed) and then in
judging the inventive step, I think that it should be treated as follows.
That is, since human recognition activity
is one of mental activities and its recognition is essentially under human free
will and then the expectation of repetition of the human recognition activity
is weak. Therefore as in the explanation of Note (22) above, in the case where
the difference from the prior documents etc. is only the content of the read
result of the carried information, there is no reliable leaping property even
if the read content seems difficult to conceive at first glance, and then I
believe that inventive step should be denied in view of the original purpose of
inventive step as eliminating inventions that do not contribute at all to the
development of industry".
However, in the human's
direct recognition process, if there are novel features in the cooperative
action (how) between human's biological function (visual, auditory, tactile,
etc.) and features on the information carrier side (line position, coloration,
irregular shape, etc.), I think that there can be grounds for inventive step (37).
Also, if the claim includes other parts besides
the information carrier for human, I believe that there may be case of positive
for the inventive step of the claim (38).
AT THE END
result, comparing Japan, the United States and Europe about the invention
eligibility, I think the Japanese practice is most stable and adequate (though
as mentioned above, it is desirable to move the weight from the stage of
invention eligibility to the stage of definition requirement or inventive step
Anyway, I believe that international
harmonization on the eligibility of invention, etc. should be realized in the
way that U.S. and United States, Europe and other countries approach Japan's practice.
(1) Among those patented on the recording
medium of the data structure, there are those which have little concrete
cooperation with the hardware resources, for example Patent 4700383 (road map
(2) State Street Bank 47 USPQ 2 d 1596
(CAFC 1998), Bilski 130 S. Ct. 3218 (2010), Prometheus 566 US 132 S. Ct. 1289
(2012), Alice 134 S. Ct. 2347 (2014)
(3) Prometheus Judgment Paper 19-24
(III), Research Report on Patent Protection of Software Related Inventions -
Heisei 24 -
(4) New guidelines for computer programs
1985, VICOM trial decision T 208/84 (1986)
(5) IBM T 1173/97 (1998), PBS PART
NERSHIP T 931/95 (2000), HITACHI T 253/03 (2004), DUNS T 154/04 (2006)
(6) "Software patents in the world
- its theory and practice" - (Invention Promotion Association) 499 p
(7) ibid 190p, 199p
(8) explanatory text 2p in "(4) not
use the law of nature" in "the invention that can be used
industrially", under the current examination standards. Further in a new examination standards applied
from October 1, 2015, it is "2.1.4 those not using natural law".
(9) by Yasuo Shizume, shioka ikehara
translation "Human Machinery Theory", Misuzu Shobo, 1979
(10) It is assumed that the physical
space and physical time that defines the matter are also included.
(11) Various definitions are known about
what information is.
"Information Science of Self-Organization" 1990 Yoshida tamito.
Therefore, although there are several features of information, other social
sciences and natural sciences aside from the field of patent law, the most
important feature in the field of patent law is "It cannot exist without
human mental activity." As is well known, there is newspaper because people
recognize so, but it is only a dirty ink on paper from the physical property
aspect. It is said that this characteristic is almost equivalent to "the
narrow sense of information" that Yoshida tamito defines (Kumamoto
University academic repository "Profit in gene information patent Ethics
of allocation: consideration based on ownership idea "Koichi Nishida
Bulletin of the Ethics Science Laboratory, Kumamoto University Bulletin
2010-03). Note that although genetic information falls within the broad sense
of information that Yoshida defines, it is not the sense of narrow sense information
and, it is an ordinary biological or chemical existence under the patent law. That
is, it is the same dimension as information of the crystal structure of metal,
judgment, 2014, provisional guidance (December 16, 2014)
(13) Prometheus patent EP application
(application 99969336.9: publication number EP 1115403)
(14) Tokyo High Court, February 13, 1990
(Showa 63 (gyoke) 133, Decision revocation Case) Jurist Case 100 Selection 4th Edition "difference
between Mere Discovery and Invention" Explanation of the use Invention, 11p right
(15) Regarding the criticism for the preoccupation of the basic tool referred
to in the U.S. judgment, even if it is so, it should not be taken out in
the right setting stage where there is a high possibility that the legal
stability will be impaired, and it is desirable to be considered in the
right exercise stage.
(16) Normally, mental activity involves
physical activity (natural phenomenon), and pure mental activity is only
(17) In addition, it is considered that
"economic basic concepts established in the world" as one of the
abstract ideas, are originally known art, and the mere applied idea is
necessarily denied by the inventive step, and therefore I think that it is not
necessary to stick to treatment on the invention eligibility.
(18) COMVIK Trial Decision T641 / 00
(19) Bidirectional Dental Treatment
Network Case (Intellectual Property High Court Judgment on June 24, 2008
(Heisei 19 (gyoke) No. 10369 Decision Revocation Case))
(20) Telephone poll advertisement method
Case (Tokyo High Court Decision on Dec. 25, Showa 31 (Showa 31 (gyona) No.12
suit to rescind trial decision)) Patent cases selection 100 (3rd edition)
(21) "Where the difference from the
one disclosed in the prior document is only in the difference of agreements,
and it is not accompanied by technical means particularly suitable for
realizing the agreement as the content of the business method, "Inventive step"
is immediately denied ... "Yoshiaki Aida" Progress of the Invention
"supervised by Minoru Takeda" Law and Problems of Patent Examination
and Judgment "(Invention Association, 2002) 228 p
(22) In the background of such thinking there seem
such below considering.
That is, the biggest feature of
mental activity is a free will and this is weak essentially at repetitive
expectation ( "bilingual dictionary case" Intellectual Property High
Court August 26, 2008 ruling ( 2008 (Gyoke) No. 10001 decision revocation ) 12p
"human is free to act and has self-determination...").
Further on the other hand, the inventive
step requires certain leaps for prior art (the original purpose of the
inventive step is to eliminate inventions that do not contribute to industrial
development at all "International comparison of examination criteria, Jurist
no. 1189 36p Aiida Yoshiaki"), and then if the the differences is only
mental activity, inventive step should be denied.
It should be noted that, even though
the mental activity is weak at repetitive expected, it is overkill that such
invention including mental activity should be immediately denied by inventive
step (by the way, in the above-mentioned "bilingual dictionary case"
12p " it is not possible to deny the invention eligibility of Patent Act
2, para.1 just because the human mental activity is included in the invention
Therefore, if novel
features include other types such as matter, it is possible that positive leaps
can be affirmed with engagement with it, and it has been patented so far. Even
if it is affirmed as such, in judgment of patent right infringement case, corresponding
of only human mental activity parts is not infringement, I think that there is
no possibility of monopolizing mental activity excessively (Intellectual
Property Law Policy Studies vol.34 (2011) Shugou 405p monopoly is pointed out).
(23) tokugikon 2012.11.13. No.267 62p
"Dialogue over Intellectual Property Law" Totugi A mild judgment of
inventive step is discussed from such large enclosed non-technology.
(24) Classification of US MPEP
211.1.05 Functional and Nonfunctional Descriptive Material (Ninth Edition,
March 2014) and the classification of this thesis do not necessarily correspond
to this classification of this paper.
(25) Benson 409 US 631575 USPQ (1972), Diehr
450 US 17518 2 (1981), The corresponding Japanese application to the Benson 409
US 631575 USPQ (1972) was permitted in Japanese Patent No. 515699.
(26) HITACHI T 258/03 (2004)
(27) In "Apparatus that generates
abbreviated representation of a group of bits" Intellectual Property High
Court judgement on February 29, 2008 ( Decision Revocation Case in Heisei 19 (gyoke)
10239), " But it does not describe a specific circuit configuration for
computing the mathematical algorithm with the digital arithmetic device ",
and rejects it as lacking the eligibility requirement.
(28) The Supreme Court Judgment
(Showa 49 gyotu No. 107) is introduced in the Jurist cases 100 selection
edition 4th edition "invention completion and refusal reasons". In
Annex B of the New Patent and Utility Model Examination Handbook which will be
applied from October 1, 2015, it seems that reference to such a Tokyo High
Court ruling on May 26, 1999 (Heisei 9 (gyoke) 206)) is gone.
(29) Software patents of the world - its
theory and practice - (Invention promotion association) 85 p
(30) ibid 62p
(31) Even though according to this paper,
there still may be annoyance to the extent of the concrete description, but the
problem is the same also in inventions of popular matter, and there are still difficult
points such as relations with known technologies. Also, this discussion is a
separate argument from another discussion about whether such claim is
indefinite or not that is super-classified by not specifying whether each step
is processed by a machine or human.
To the last, the description
of cooperativity is required in case of such claims where machine processes.
(32) Even if the "concrete cooperation
with hardware resources" is transferred from the invention eligibility stage in the first sentence in Section 29 (1) to the definition
requirement stage of Article 36, It seems that there is no change in the
allowance of patent so much.
(33) The standard of inventive step judgment (the effect should also be taken
into consideration) should not be different according to data type of for
example Natural science data (earthquake simulation apparatus, genetic
information analysis system), economic data (bookkeeping apparatus), resources
and key data (Karmarkar's algorithm method (patent No. 2033073 "optimal
resource allocation method") and Cryptographic device), information
processing data(multi-processing device of task as computer processing
unit)),. mathematical data, etc.
bookkeeping apparatus etc., as long as they are machine processing, repetitive
expectation and certainty are guaranteed.
to criticism too much preoccupation of the basic tool referred to in the US judgment,
even if it is so, I think it is not to be taken out in the right setting stage
where there is a high possibility that the legal stability will be impaired,
but it is desirable to be taken up at
the stage of exercising of the right.
(34) In Annex B of the New Patent
and Utility Model Examination Handbook applied from October 1, 2075, although
it is in the judgment of the invention eligibility, there is such statement of "concrete
cooperation with hardware resources is necessary ".
(35) In the case of the movie DVD, the
invention eligibility is affirmed because of the use of a matter called DVD,
and in the judgment of inventive step, in case that new effects against the
prior art are only movie contents, then the inventive step is denied for the
same reason as explained in the information carrier for human.
video recording medium of the case of a video recording medium case (heisei 9 (gyoke)
No. 206 (Tokyo High Court, May 26, 1999 ruling)) is an example of the Information
carrier for information processing device, and the cooperation with the device
can barely be read from the insisted effect, so the eligibility of the
invention is affirmed (In this paper I will judge definition requirement and
inventive step on affirming the eligibility.).
(36) in "Roman letters table case"
Intellectual property high court decision July 11, 2012(Heisei 24 (gyoke)
1,0001 decision ruling cancellation case) invention eligibility requirement is judged
and denied , but at that time, word recognition is a result of learning and it
is said that it is belonging to mental activity to demonstrate it.
(37) in "Bilingual dictionary case"
Intellectual property high court Decision on August 26, 2008 (Heisei 20 (gyoke)
No. 10001 trial decision cancellation case), although not treated as inventive
step, the utilization of natural law is found in consonant recognition ability and
affirmed of the invention eligibility. The boundary with mental activity is a
(38) In the case where the computer
program list can be processed by the optical reading device (computer), it is a
case that it is an information carrier for a human as well as an information
carrier for information processing device. Although as to the human aspect the
inventive step is week, however there may be cases where total inventive step
can be affirmed if there are novel features in computer processing.