New1

Only available on StudyMode
  • Topic: Patent, Patentability, Patent law
  • Pages : 48 (12081 words )
  • Download(s) : 97
  • Published : March 31, 2013
Open Document
Text Preview
Patentability of Business Method Inventions and
Inventions with Non-technical Features in Japan
versus the US and Europe

By:
Hideo FURUTANI, Japanese Patent Attorney
Furutani Patent Office
TEK No. 2 Building
1-23-20, Esaka-cho, Suita-city
Osaka, 564-0063 JAPAN

1.

Introduction

This paper describes business method patents and patents with non-technical features in Japan and compares them to those in the United States and Europe. First, the basic requirements for patents and examination guidelines in Japan will be described. Then, hypothetical claims are used to illustrate the differences between Japan, the US and Europe. I also include a translation of the document entitled “Examples of Examinations on Inventions Related to Business Methods” which was issued on April, 2003 by the Japan Patent Office (hereinafter referred to as JPO).

2.

The Expansion of Patentable Business Method Inventions and Inventions with non-technical features

2.1
The expansion of patent
computer-implemented inventions in Japan

eligibility

of

business

and

Business method inventions are patentable in Japan if they are realized using computers. Thus, we have to know about patent protection of software inventions in Japan to understand patent protection of business method inventions. First, we will examine the evolution of this standard. (1) Method of Advertising on Utility Poles (1956)1

The invention in this case was a method by which an employee would exchange advertisement boards on utility poles. The Tokyo high court said that the method applied was not the subject matter of a patent, because it did not utilize the laws of nature.

(2) Examination Guidelines for Computer Related Inventions –vol. 1- (1975)2 These guidelines, no longer in use, showed that computer program related inventions could be the subject matter of patents if the program handled technical operations. Thus, methods of handling technical operations carried out by computer programs could be patented. For example, in these guidelines, methods implemented by computer programs which control manufacturing machines were subject to patent. However, if a computer program did not Tokyo high court decision of December 25, 1956, 1956(Gyo-Na)No.12, Gyosei Saibanrei-shu vol.7 No.12 Page 3157

2 This is out of print now.
You can find this guideline (Japanese version) on
my web site. http://www.furutani.co.jp/office/ronbun/soft-standard-1.pdf 1

2

handle technical operations but non-technical process such as pure mathematical or economical algorithms, it was not patentable. At that time, computer program related inventions could be patented as method patents but not as apparatus patents.

(3) Method for Controlling Operation of a Computer (1980)3
The invention in this case related to a method for classifying data using a computer. The appeal board of the JPO said that the essence of the invention was not controlling the operation of a computer, but a mathematical operation. Thus, the invention was not statutory subject matter.

(4) Method for Displaying Objects (1980)4
The invention in this case was a display method using a computer. The appeal board of the JPO said that the essential part of the invention was the computer program carrying out mathematical operation, and thus the invention could not be subject matter of a patent.

(5) Examination Guidelines, part VII, chapter 1 (1993)5
These guidelines said that in addition to computer programs which handled technical operations, computer programs which handled non-technical operations such as word processing programs were also statutory inventions if such computer programs carried out operations utilizing hardware resources of computers or hardware resources outside computers. These guidelines made it possible to obtain patents for business methods implemented by computers. Further, these guidelines clearly deny applying the Point of Novelty Approach in which the judgement of whether an...
tracking img