14 Computer-Implemented Inventions
as Patentable Subject Matter (*)
Invited Researcher: Pessi Juho Antti Honkasalo (**)

In the past fifty odd years, software development has shown steady growth. It is now generally acceptedthat computer programs can attract patent protection, but examination of software inventions is difficult.
Questions lacking a simple answer include, but are not limited to, when a contrivance that is implemented on
the computer constitutes a patentable invention, when such subject matter can be deemed to be novel, what canbe regarded as an inventive step in case of software and what is the eventual scope of the protection conferred bypatent claims that are realised by a computer program.
This research addresses issues mentioned above by reviewing laws, examination guidelines and judicial
precedents in the light of technically literate commentary. The territorial scope of the research encompasses thepatent laws of Japan and Europe, both of which have been subject to international harmonisation in the form ofmultilateral agreements and treaties. Through the methods of doctrinal and comparative research, this study
contemplates Japanese and European practices in this field and endeavours to analyse whether there are lessons
to be learnt from the other jurisdiction. The Report concludes with a list of intra- and extra-systemic
implications that need to be discussed or solved in the future.

Ⅰ Introduction
The patentability of computer programs has
been the subject of considerable debate in
post-industrial societies around the world. On thebasis of previous studies as well as developments
in case law and administrative guidelines it ispossible to offer a comparative look into thepresent
legal
state
with
regardtocomputer-implemented inventions as patentablesubject matter.

Ⅱ Patentability of Computer Programs
1

Patentable Inventions: Primer

To qualify as a patentable invention, there
must first of all be patent-eligible subject matter.
In Japan, patent-eligible inventions have been
demarcated by a statutory definition: they must,pursuant to Section 2(1) of the Patent Act, be“creation[s] of technical ideas utilizing the laws ofnature.” Under the European Patent Convention(EPC), the legislature has chosen an opposite
approach: Article 52(1) EPC provides that
European patents are to be granted for inventions
in all fields of technology without further defining
the term “invention,” but paragraph 2 of the same
article then stipulates as an exception to theprincipal rule that certain subject matter andactivities are not to be regarded as inventions in
the aforementioned sense. At all events,
irrespective of the structuring of the applicableregulatory framework, the element of invention is
critical for any award of a patent. It is atreaty-based requirement under Article 27(1) of
the Agreement on Trade-Related Aspects ofIntellectual Property Rights (TRIPS) thatsignatories take care of it.
2

European Disinclination

The statutory prohibition against the grant ofa patent for programs for computers is inaccordance with Article 52(3) EPC restricted tocases where the application relates to subject
matter falling under this category “as such.”
Accordingly, distinction has been drawn between
a program for a computer, which per se cannot be
regarded as an invention within the meaning of
Article 52(1), and a computer programmed tooperate in a particular manner, which as atechnical apparatus satisfies the provision. Fromthe vantage point of intellectual property law as awhole, this makes sense insofar as patent right isto protect the program’s operation, in other words
the behaviour that the software and hardware
components bring about. The actual manner in(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2011
entrusted by the Japan Patent Office.
(**) PhD student, Faculty of Law University of Surrey, UK●

IIP Bulletin 2012 Vol.21

1 ●which this is done, in terms of literary expression,is protectable by copyright.
The Vicom decision (T 208/84) is the pivotal
figure in the European journey towards thepatentability of computer programs. It was heldthat “[g]enerally speaking, an invention which
would be patentable in accordance withconventional patentability criteria should not be
excluded from protection by the mere fact that for
its implementation modern technical means in theform of a computer program are used. Decisive iswhat technical contribution the invention as definedin the claim when considered as a whole makes to
the known art.” 1 Subsequently the Technical
Board of Appeal 3.5.01, which primarily deals withthe relevant classifications, has in different
compositions adopted divergent criteria in
determining applications before them. Still in IBM(T 1173/97), the Board in question was asking
whether the invention is machine-oriented andthereby makes such a technical contribution; if not,it was to be barred from patentability under Article
52(2)(c).
But in later cases, notably that of Microsoft(T 424/03), the Board has carved out a rule ofsimply asking whether there is a claim tosomething “concrete,” for example a storage
medium. If there is a reference to an apparatus,
the per se exclusion does not apply. The Presidentof the European Patent Office (EPO) tried tointervene under Article 112(1)(b) EPC. The
Enlarged Board of Appeal held referral G 3/08
inadmissible but noted that, in consequence of a“legitimate development of . . . case law,” a claim
to a program on a computer-readable storage
medium should now necessarily avoid exclusionfrom patentability on this point.

Ⅲ Novelty and Technical Effect1

Legal Fiction of “Technical Contribution”

The Guidelines for Examination in theEuropean Patent Office (hereinafter “EPO
Guidelines”) state that technical character as afundamental requirement of patent law is impliedin the term “invention.” The Guidelines start bystating that any claimed subject matter, which
defines or uses technical means, is able to passthis basic hurdle and be an invention within themeaning of Article 52(1) EPC. Even though theexecution of a computer program always involves
certain physical effects in the form of electricalcurrents and the like, such normal physicaleffects are, the Guidelines continue, not in●themselves sufficient to lend a computer program
technical character. But if a computer program iscapable of bringing about a further technical effect,
which goes beyond the normal physicalinteractions between the program and thecomputer, it is not excluded from patentability.
It is not only the further technical effect,
however, that can lend to technical character. The
requirement of technical character may also besatisfied if technical considerations, which must
be reflected in the claimed subject matter, arerequired to carry out the invention. If the claimed
subject matter passes this prima facie test fortechnicality, the patent examiner ought then toproceed to questions of novelty and inventive
step. In assessing whether there is an inventive
step, the examiner must formulate an objective
technical problem that has been overcome. The
solution of that problem constitutes theinvention’s technical contribution to the art. The
presence of such a technical contribution
establishes that the claimed subject matter has atechnical character. If no objective technicalproblem is found, the Guidelines explain, there
can be no technical contribution to the art, andthe claim is to be rejected on that ground. Thus,
the enquiry recognises no less than the following
parameters: technical character, technical means,technical
effect,technical
considerations,
technical problem and technical contribution.
One can essay to map these variables onto a
flowchart so as to piece together their systemicinteractions. Figure III.1 below represents theprocess of examining a European patentapplication
when
itrelatestoacomputer-implemented invention. The illogicalfork that the process makes after the question oftechnical means signifies the difference between
the technical-effect approach, laid down in Vicom
and IBM, and the subsequently adopted “anyhardware” approach, advocated for example in
Microsoft, which removes much of the need todebate the existence of technical character andfocuses on novelty and inventive step instead.

2 ●IIP Bulletin 2012 Vol.21

Computerimplemented
invention

Technical
means?

No

Excluded frompatentability

NoTechnical
considerations?

Yes

Technical effect?

Yes

No

Excluded frompatentability

Yes

Prima facie
technical character

New?

Yes

No

Application rejected

No

Application rejectedNo

No technicalcharacter

Yes

Technical
problem?

Yes

Technical
contribution?

Excluded frompatentability

Yes

Proceed to
specification

FIGURE III.1. EXAMINATION OF PATENTABILITY BEFORE THE EPO

2Japanese Guidelines

In Japan, the statutory doctrine isinterpreted so that where information processing
by software is concretely realised by using●

IIP Bulletin 2012 Vol.21

hardware resources, said software is deemed tomeet the statutory requirement of being an
invention within the meaning of Section 2(1) of
the Patent Act. Software inventions will beconsidered patentable subject matter if the claims
3 ●describe how the computer reads the softwareand uses it in combination with hardware in orderto perform arithmetic operations or othermanipulation of data. Practical utility is notenough, but a “technical feature” is the key
element: the claimed software-related invention
must be concrete enough to accomplish a certain
purpose. To be eligible for a patent, the invention
needs to utilise a computer so as to provide a
concrete means in cooperation with the program orprograms. The procedure, described in the
Examination Guidelines for Patent and Utility
Model in Japan (hereinafter “JPO Guidelines”),
for judging whether or not an invention in thisdomain is capable of constituting a prima facie
protectable invention has been imaged in Figure
III.2 below.

FIGURE III.2.
EXAMINATION OF PATENTABILITY BEFORE THE JPO

Not unnaturally, all enquiries like these are,in the ultimate analysis, open to various
interpretations
andrequirediscretionary
judgment on the part of the examiner. But ascompared to Europe and the system constructedby the EPO Boards of Appeal, which requires theexaminer subjectively to determine whether thecontribution of the claim to the prior art lies in atechnical area or an area excluded by Article 52
EPC, the JPO Guidelines provide a more concrete
and unambiguous treatment of patent claims
related to software.

●

3

Examination of Prior Art

It has been said that information technology
is an area in which it is particularly cumbersome
for the examiner to locate prior art. In addition topatent documentation, unpatented research andcommercial developments – in the form of journaland other written materials as well as proprietaryand open-source software on offer – are of utmost
importance in these fields. In Japan, the National
Center for Industrial Property Information andTraining (INPIT) operates a database called IPDL,
which incorporates the “Computer Software
Database.” The latter contains non-patent
literature related to software, indexed andcross-referenced, labelled with keywords andarchived with summaries, but only in Japanese.
The problem of locating prior art however is
not the only, and perhaps not even the mostdifficult, challenge in assessing novelty in case ofcomputer-implemented inventions. The structureof computer programs exists only in terms of
their operational environment and theiroperational dynamics. It follows that it is possible
to delineate a program on multiple levels of
abstraction in many ways, all of which are equally
true. Owing to this complexity, it is far fromtrivial to conclude whether a software-related
invention is really novel or just another way of
expressing the same idea that many a softwaredeveloper has utilised before. Comparing sourcecode with patent claims can be well nigh aninsurmountable exercise.
It has been expounded that “crowd
sourcing,” harnessing the input of so-called“citizen experts” in obtaining prior art material,
might offer a solution to some of these problems.
The Japan Patent Office (JPO) entrusted the IIP
with carrying out a pilot project in community
patent review in 2008 to test the efficacy of open
review in the patent review process. The pilot
elicited a positive response from reviewers andreviewer contributions exceeded expectations,
therebyprovingthepotentialofthepeer-to-patent model, and so a new project, Peer
to Patent Japan (at http://peertopatent.jp/), waslaunched in the beginning of 2011. The system isstill under construction but is expected to go
operational in 2012. The EPO has yet to follow
suit by implementing a similar initiative, but theUnited Kingdom Intellectual Property Officeallowed online review of patent applications from
1 June to 31 December 2011. 174 U.K. cases wereselected for participation. Programmes like theseprovide an additional resource for patent
4 ●IIP Bulletin 2012 Vol.21

examiners to obtain pre-grant observations fromthird parties.

Ⅳ Inventive Step Case of Software1

Hurdle of Inventive Step

How is inventive step as a condition forpatentability to be applied in case of software? The
JPO Guidelines state that combining technologies
used in different fields or applying a technology
used in one field to another is usually considered
to belong to the realm of ordinary creative activityof a person skilled in the art. Consequently, when
there is no technical difficulty for such combination
or application, such an invention does not involveaninventive
step
save
where
specialcircumstances such as remarkably advantageoussynergistic
effects
exist.
Furthermore,
software-related inventions may be consideredobvious if they involve (i) an operation known inother fields, (ii) the addition of a commonly known
means or the replacement of a means by anequivalent, (iii) the implementation in software offunctions previously performed by hardware, (iv)routine-like systematisation of pre-existing humantransactions, (v) reproduction of known events in acomputerised virtual space, or (vi) a designmodification on the basis of known facts orcustoms.
2

Ⅴ Protection Conferred by Claims
1

Problem-and-Solution Approach

In order to assess inventive step in an
objective and predictable manner, instruct the
EPO
Guidelines,
theso-called“problem-and-solution approach” should beapplied. Under such an approach, there are threemain stages: (i) determining the “closest priorart,” (ii) establishing the “objective technicalproblem” to be solved and (iii) considering
whether or not the claimed invention, startingfrom the closest prior art and the objective
technical problem, would have been obvious to aperson skilled in the art. In this approach,inventive step is in large part a product of
postulating a problem and analysing the technicalcontribution thereto. All this utilises the closest
prior art, which is why the significance ofidentified pre-existing material is fairly important.
The involvement of an inventive step is judged bycomparing the claimed invention with the closest
prior art, so that if there is an absence or amisidentification of the latter, it is possible to get
the inventive step considerably wrong. If precious●

IIP Bulletin 2012 Vol.21

few relevant prior art has been found or noticed,
an invention is given protection for an inventive
step that is only apparent, not substantive, andthe resulting patent can be said to be more or lessfrivolous.
Pursuant to Section 24bis of the Regulations
under the Japanese Patent Act, the statement asprovided for in an ordinance of the Ministry of
Economy, Trade and Industry referred in Section
36(4)(i) of the Act, concerning the detailed
explanation of the invention, must contain not
only matters necessary for a person with ordinary
skills in the art to understand the technicalmeaning of the patent, but also the problem to besolved through the invention and the means tosolve that problem. The applicant needs to state
the technical field to which the invention pertains
and, in the section dealing with the solution to the
problem, how the method or procedure has been
embodied. This can be done using flowcharts andsuchlike. In accordance with the JPO Guidelines,
it is a violation of the requirement set forth in the
Ministerial Ordinance if a person skilled in the art
cannot understand the problem to be solved by
the invention and its solution on the basis of thedetailed description of the invention, drawings
attached to the application or the common generalknowledge at the time of filing.

Disclosure of the Invention

Proper construction of the claims is a basic
step for any patent application. It requires
identification of the nature of the subject matterof the patent and the scope of the protection thatis sought. Claims must be supported by asufficient disclosure of the invention so as to be
acceptable. In Japan, Section 36(4)(i) of the Patent
Act provides that the detailed explanation of theinvention must enable any person ordinarily
skilled in the art to which the invention pertains“to work the invention.” Under Article 83 EPC
the requirement is that an application be so“complete for it to be carried out by a person
skilled in the art.”
However, applicants need not disclose any
source code to receive a patent. With inventions
that utilise computer programs, the statutory
requirements related to the disclosure of theinvention have been interpreted in a way that it
suffices to specify the functional description of
the software. After all, a patent confers on thepatentee an exclusive right to prevent
5 ●unauthorised third parties from using thepatented product, the patented process or a
product obtained directly by the patented process,in the meaning of certain claimed functionality,
not just from reproducing the underlying
programmed code.
The effect is that the invention in asoftware-related application can reside to a large
extent in diagrammatic representations of themodel. However, as regards computer programs,
it is possible to describe the same underlying
invention in a way that it appears to be an entirely
different entity and, to some extent, vice versa.
The sufficiency requirement, if applied vigorously,
would appear to be one key to that dilemma. The
disclosure of the invention must contain adescription of how the claimed operational
procedure can be realised on the computer – inother words, how the invention can be carried out–, and the claims should be construed within theframe of this explanation. The explanation mustbe sufficient for the hypothetical person skilled in
the art to understand how the software andhardware are to be structured or else theapplication does not meet the statutory
requirements.
2

Frivolous Patents?

The breadth and scope of protection
conferred by a patent upon its right holder isdetermined by the claims. Should the language
used therein be ambiguous, it results indifficulties of deciding just what is protected. Thisnaturally applies to all technologies and is not
specific to computer programs, but the adaptable
nature of software can make the problem moredifficult in this field of computer-implemented
inventions. In accordance with Article 84 EPC,
the claims must be clear and concise and besupported by the description. This is echoed by
Section 36(6)(ii) of the Japanese Patent Act,
pursuant to which “the invention for which apatent is sought is clear” is one of the items thatthat the statement of the scope of claims asprovided in paragraph 2 of the same article mustcomply with. However, as has been explained, it
is possible to delineate a computer program on
multiple, equally true levels of abstraction.
Normally, once a product has been designed,
if a review of existing patents reveals a blocking
invention, it is possible to modify the product sothat it does not infringe the patent. But the levelsof abstraction as related to software may create
difficult barriers to designing around granted●

patents, depending upon what has been allowed
for protection. If the technical scope of a patent
covers only one possible solution to a problem, it
is most likely that there are alternative options
available for competitors. In contrast, should
protection have been given effectively to the
problem itself, workarounds are of much lessutility. In instances where a new technology area
has received very broadly scoped protection at
the outset, there is no need to build a patentcluster around the invention; a single patent is ablanket strategy in itself.
The legislative, administrative and judicial
standards applied both in Europe and in Japan
should limit the scope of the patent to a particular
implementation in hardware and software. By thattoken, non-specific claims for the use of ageneral-purpose computer or a mobile computing
platform to “translate documents,” for example, do
not meet the requirements of a patent monopoly
even if the abstract idea was novel. Employing
confusing claim language should not be of muchassistance either, inasmuch as both the EPC and
the Japanese Patent Act require that the patentapplication disclose the invention in a clear manner.
Therefore, if the claims and the description of theinvention are inconsistent, it is arguable that theapplication is in violation with the requirement ofclarity.

Ⅵ Conclusion
1

Intra-Systemic Implications(1) Problematic Nature of Classification
The classification of “software patents” isproblematic. Even though protection may be lesswith that form of claim, a patent attorney
equipped with relevant understanding oftechnology can turn a software invention into a
hardware one. Industries have replaced analogue
control with digital means and in many instances
software has taken over the machine tasks.
Owing to this ubiquity, it is nearly impossible toprevent patent applications that relate, more orless directly, to computer programs. And yet the
EPC states that programs for computer are notpatentable inventions as such. It might be betterto accept the current position, which protects
software in its own right in all but name, andcome to grips with adapting the patent system tocope with the special demands of unorthodox
subject matter.

6 ●IIP Bulletin 2012 Vol.21

(2) Invalidation Proceedings
Opposition, whether in the form of Part V
EPC or Section 123 of the Japanese Patent Act, isa cheaper option than litigation. But thenine-month time limit set forth in Article 99(1)EPC is a double-edged sword. On the one hand it
lays down a deadline after which patentees need
not fear EPO-wide invalidation proceedings
through a one-stop shop. However, it may also
attract opponents, who feel bound to take action
within the time limit, simply in the hope thatsome prior art arises. It may be that there ought
also to be a centralised system of re-examination
should prior art be found outside the opposition
period. In any event, the existing European
process could be stepped up, either by following
the Japanese example of giving preference in theoffice to invalidation proceedings or perhaps byadopting the recent U.S. approach of a legislative
fiat requiring disposition within a given period oftime.2(3) Affirmative Defence of Prior Use
Software artefacts are seldom static entities.
It is normally necessary to fix problems that havemanifested themselves in the course of the use ofa program. Is the affirmative defence of prior use
still available once security vulnerabilities orother bugs have been fixed? What about
improving the usability or performance, or both,of the computer program; does it still maintainthe general nature of such prior use? What of thereplacement of software with a newer or better
version, which offers the same functionality, butbrings the system up to date and slightly
improves its characteristics; is it approved aswithin the scope of prior use? For the time being,no unequivocal answer can be given.
(4) Concerns over Interoperability
It would be quite out of the ordinary if thetechnical scope of a patent equalled, one-to-one
without remainders, its embodiment in the formof a computer program. Ordinarily one or morefeatures of software are covered by a patent right,
but the remaining components are unprotectable
under this heading of intellectual property.
However, because a patent confers on its owner
the exclusive right to prevent third parties nothaving the owner’s consent from the act of“using” and, where the subject matter of a is a
product, “making” the patented invention, any
execution of a program on a computer is, prima
facie, an act restricted by patent if one or moresuch rights are involved. This may cause●

IIP Bulletin 2012 Vol.21

problems if one wishes to peruse the parts of the
program that provide for interconnection andinteraction between elements of software andhardware, in other words its “interfaces.”
It is unclear whether patent law’s current
exceptions for experimental and research
purposes permit reverse engineering so as tocompile interoperability information if the idea is
to bring a new computer program – either an
add-on for or a competitor of the original software– commercially into the market. In an industry
characterised by strong network externalities
that privilege interoperable components andeasily lead to vendor lock-in, where innovation issequential and cumulative, this may create aproblem. The function of a computer program is
to communicate and work together with othercomponents of a computer system and with users.
Reverse engineering is the tool of last resort tomake this interoperability possible and if patentlaw rules out such a possibility, it means that it
will be possible to leverage patents to protect
elements of software that are essentiallyunprotectable.
2

Extra-Systemic Implications: Interface
with CopyrightComputer programs as such are protected as
literary works within the meaning of Article 2 of
the Berne Convention. Inventions relating tosoftware can also be protected by patent. Both ofthese intellectual property rights can co-exist
simultaneously in the same piece of software.
The more patent and copyright law overlap, themore important it becomes that they take accountof one another.
Copyright protects the program code and its
particular implementation against reproduction,
alteration, distribution and communication to the
public, but not the implementation of a similaridea. Because of the availability of a patentfollowing a substantial examination, copyrightprotection of software should be retained to
instances of literal copying, whether in original or
altered form, and temptations to broaden thescope of protection ought to be rebutted.
1
2

7 ●

Emphasis added.
See Leahy-Smith America Invents Act of 2011, Pub. L.
No. 112-29, § 316(a)(11), 125 Stat. 284, 302 (2011) (. . .
the Director [of the USPTO] may, for good cause
shown, extend the 1-year period by not more than 6months . . .”).