Ｓｏｆｔｗａｒｅ Ｐａｔｅｎｔ Ｅｌｉｇｉｂｉｌｉｔｙ ｉｎＪａｐａｎＩｎｔｅｌｌｅｃｔｕａｌ Ｐｒｏｐｅｒｔｙ Ｈｉｇｈ
Ｃｏｕｒｔ ｏｆ Ｊａｐａｎ
Ｔｏｓｈｉｃｈｉｋａ Ｙａｇｕｃｈｉ

IP High Court

Ｓｔａｔｕｔｏｒｙ Ｄｅｆｉｎｉｔｉｏｎ ｏｆ
Ｐａｔｅｎｔ Ｅｌｉｇｉｂｌｅ Ｉｎｖｅｎｔｉｏｎ
・ Statutory invention in Japanese Patent Act means“the highly advanced creation of technical ideas
utilizing a law of nature”. (Article 2, Paragraph (1)of Patent Act)
The term “highly” is used to distinguish between“invention” and “device” under the Utility Model
Act, and does not mean much in judging whether
the invention is statutory or not.

Examination Guidelines
Japan Patent Office has detailed
Examination Guidelines.
1 General Guidelines on Non-Statutory
Inventions
2 Specialized Guidelines on Software-related
Inventions

Statutory inventions
Any statutory invention should not be one of thefollowing:
1 A law of nature as such
2 Mere discoveries and not creations
3 Those contrary to a law of nature
4 Those in which a law of nature is not utilized
5 Those not regarded as technical ideas
6 Those for which it is clearly impossible to solve
the problem to be solved by any means presented
in a claimPatentability of Software-related
inventions
The basic concept to determine whether softwarerelated invention constitutes “a creation oftechnical ideas utilizing a law of nature” is asfollows:
1 Where “information processing by software isconcretely realized by using hardware resources,”the said software is deemed to be “a creation oftechnical ideas utilizing a law of nature.”Patentability of Software-relatedinventions
“Information processing by software is concretelyrealized by using hardware resources” means that,as a result of reading the software into thecomputer, the information processing equipment(machine) or operational method thereof
particularly suitable for a use purpose isconstructed by concrete means in which softwareand hardware resources are cooperatively working
so as to realize arithmetic operation ormanipulation of information depending on the said
use purpose.

Patentability of Software-related
inventions
2 Furthermore, the information processing
equipment (machine) and operational
method thereof which cooperatively workwith the said software satisfying the above
condition 1, and the computer-readable
storage medium having the said software
recorded thereon are also deemed to be“creations of technical ideas utilizing a lawof nature.”Japanese examination of patentability of softwarerelated invention

In Japan, the patentability of softwarerelated inventions is examined as follows:
1 Whether the invention meets the abovementioned eligibility requirement or not,2 Whether the invention meets the description
requirement or not,3 Whether the invention involves an inventive
step or not (non-obvious or not)Japanese examination of patentability ofsoftware-related invention

In most software-related cases at IP High Court of Japan, we focus onwhether or not the invention involves an inventive step.
Attempts are usually made in the field of software technology tocombine methods or means used in different fields or apply them toanother field in order to achieve an intended effect. Consequently,
combining technologies used in different fields and applying them toanother field is usually considered to be within the exercise of an
ordinary creative activity of a person skilled in the art, so that when
there is no technical difficulty (technical blocking factor) for suchcombination or application, the inventive step is not affirmatively
inferred unless there exist special circumstances, such as remarkably
advantageous effects.

CasesCases in this presentation are not necessarily aboutsoftware-related inventions.
 Since we don’t have many cases in which patenteligibility of software-related invention are themain issue, I would rather introduce cases
concerning patent eligibility, whether or not they
involve software-related invention.
Case 1 (IP High Court)
Decided on September 26, 2006
 Case number 2005 (Gyo-Ke) 10698
 A case in which “patent eligibility of point
management apparatus / method ” is at issue The court denied patent eligibility relying
on JPO Guidelines.
Case 1 Point Management System
Point Management Database

Creating An Administration Number

Customer Registration

Creating A Point Account

Adding Points

Case 1

Point Management System

This invention includes
1 A step of receiving information such as
customer ID via network
2 A step of adding designated points to eachcustomer’s accumulated points based on
customer ID and administration number

Case 1
The court said as follows: “Even though there are phrases like “network ” and ”point
management database” in the claims, this invention is not
limited to a method operated by computers. And when thismethod is operated by human beings, it is just a man-maderule.”
 “Even when we consider that this invention is about themethod operated by computers, there is no reference in theclaims and specification as to whether or not each step is
operated by computers, and there is no reference to thehardware resources. Words like “network” and “database”
don’t necessarily show that this method is limited to theone operated by computers.”
Case 1“ Considering the claim 11, we could understandthat the method can be operated by computers, but
it cannot be said that as a result of reading thesoftware into the computer, the information
processing equipment (machine) or operational
method thereof particularly suitable for a use
purpose is constructed by concrete means in whichsoftware and hardware resources are cooperatively
working so as to realize arithmetic operation ormanipulation of information depending on the said
use purpose.

Case 2 (IP High Court)
Decided on February 29, 2008
 Case number 2007 (Gyo-Ke) 10239
 A case in which “patent eligibility of anapparatus with a method of generating
abbreviated expression of bit group” is atissue The court denied patent eligibility relying
on JPO Guidelines.
Case 2 Hashing process in this invention
Input of the message “m”

Input of the key “a”
m + a =ss2
mod p
mod 2lOutput of the shortened message

Case 2 Hashing
Hashing is a means of reading data.
You can get location of an inputted data in Hashing.
However, one on one correspondence is not guaranteed(“collision”). So you have to reduce the possibility of“collision”.
The same holds true in this invention. The purpose of thisinvention is reducing the possibility that “m1”, which is ashortened value of “n1” happens to equal “m2” , which isa shortened value of ”n2”.

Case 2

The court said as follows:“This invention is about an apparatus in which a message having “n”
bits or the string is changed into an “l” bit message, and Hashing isused in this process. Hashing is a way of expressing a long data as ashort one.”“It can be said that this invention is equivalent of a mathematical
function, Hashing.”“The above-mentioned solution is nothing but a mathematicalalgorithm and does not utilize law of nature. Therefore, unless there isno other invention utilizing technical ideas in the apparatus itself, thisinvention is not patent eligible.”“The apparatus itself does not include any novel composition. Also,
there is no reference in the claims as to how to operate the abovementioned mathematical algorithm in the arithmetic circuit.”

Case 3 (IP High Court)
Decided on June 24, 2008
 Case number 2007 (Gyo-Ke) 10369
 A case in which “patent eligibility of aninteractive network for dental treatment ” isat issue The court confirmed patent eligibility
without relying on JPO Guidelines.
Case 3
Interactive Dental Restorative Network
User’scomputer

Database
1630

Network Server
1610

User’scomputerUser’scomputerCommunications
Network
1620

User’scomputerCase 3
Interactive Dental Restorative Network
Dental Restorative Network includes
1 Network server having a database
2 Communications network
3 Computers
4 Means of judging required dental repairs
5 Means of formulating an early-stage dental treatment plan
In this invention, “computer user” means both the dentist andpeople at dental restoration laboratory.

Case 3The court said as follows:“This invention may not be considered to constitute an “invention” prescribedin Article 2, paragraph (1) of the Patent Act, even if a technical means ofsome kind is presented in the claims for the invention, when the essence of theinvention is directed at mental activities themselves, as a result of an analysisof the entire contents of said claims.”“This invention, on the other hand, can be said to constitute an “invention”
described above, even if it includes acts attributable to human mental activities
or it is relevant to such mental activities, when the essence thereof supports
such mental activities or offers a technical means that replaces said activities.
In such case, the invention may not be viewed as one that should be excluded
from the scope of patent.”“A “means for judging required dental repairs” and a “means for formulating
an early-stage treatment plan that includes criteria for designing preparations
for prosthetic materials used in the aforementioned dental repairs” prescribedin Claim 1 include factors realized through human acts.“Case 3

“Mental activities, such as judgment and assessment, are considerednecessary for implementing Invention 1.”“However, it is difficult to say that the Invention 1 is directed atmental activities themselves, in light of the purpose of the invention
and the detailed description stated in the specification.”“Rather, Invention 1 may be, on the whole, understood as a provider
of a technical means of assisting dental treatment supplied with “anetwork server with a database”, a “communications network”, a“computer installed in a dental treatment room”, and an “apparatus thatenables image display and processing” whose operations are based onthe computer.”“Invention 1 may be considered to constitute the “creation of technicalideas utilizing the laws of nature”.

Case 4 (IP High Court)
Decided on August 26, 2008
 Case number 2008 (Gyo-Ke) 10001
 A case in which “patent eligibility of amethod of looking up English words in adictionary only by pronunciation without
knowledge of their spelling” is at issue The court confirmed patent eligibility
without relying on JPO Guidelines.
Case 4
Dictionary with English phoneme index
Words are arranged in order of consonant phoneme.
There are four elements, consonant phoneme, accent,spelling, and Japanese translation.

Case 4The court said as follows:“Even if the process of creating a technical idea aimed at solving a
specific problem contains mental activities, decision making or
behavior of human beings or is closely related to the mental activitiesof human beings etc., this alone should not be grounds for denying thecategorization of the relevant invention as an “invention” defined inArticle 2, paragraph (1) of the Patent Act.
“If the claim as a whole and the detailed description of the invention
etc. suggest that the creation of a technical idea utilizing the laws ofnature could be considered a major means of solving a specificproblem, it should be categorized as an “invention” defined in theaforementioned paragraph.”Case 4


“By focusing on the fact that human beings (including those who use
dictionary concerning the invention) excel in sound recognition,
especially distinction of consonants, more than in many other abilities
that human beings inherently possess, this invention is designed to use
this human beings’ inherent ability of distinguishing consonants tooffer a method of achieving certain effects in looking up English words
in a dictionary repeatedly and continuously even without an accurate
knowledge of their spelling. This is considered an example where thecreation of a technical idea utilizing laws of nature serves as a majormeans of solving a specific problem. Therefore, it is concluded that
this invention can be categorized as an “invention” defined in Article 2,paragraph (1) of the Patent Act. ”

Case 5 (IP High Court)
Decided on October 31, 2007
 Case number 2007 (Gyo-Ke) 10056
 A case in which “patent eligibility of a small bag for
medicine with a perforated line” is at issue
 In this invention, pharmacists are supposed to fill in thepatient’s name above the perforated line and otherinformation such as medicine’s name and correct usage
below the perforated line. Patients are supposed to cut
along the perforated line, then a new opening is formed.
When patients throw away the medicine bag, the private
information can be protected.
Case 5: Bag of the medicine
patient’s namemedicine’s namecorrect usage
photo of the medicine

Case 5
Bag of the medicine
In this invention, people at pharmacy are supposed to
1 Prepare the medicine bag with perforated line,
2 Print necessary information on the bag,
3 Put the medicine in the bag,
4 Deliver the bag to patients.
Patients are supposed to cut the bag along theperforated line to form a new opening.

Case 5The court confirmed patent eligibility without relying on
JPO Guidelines.
 The court said as follows: “It is a man-made rule that patients are supposed to form anew opening by cutting along the perforated line.” “However, as a whole, this invention has the effect ofpreventing the misuse of private information when themedicine bag is thrown away.”“This invention includes the process of both printing byprinting machine and forming new opening by patients.”“It can be said that the effect of invention is achieved
through the process of printing and other operation carriedout by machine.” “As a whole, this invention utilizes a law of nature andpatent eligible.”Conclusion
Examining these cases, it is not yet clear how IP
High court of Japan will handle patent eligibilityof software-related invention / business method
invention in the future.
 Importance of Examination Guidelines
 Predictability vs. Flexibility
 The court decision of case 4 has brought about
lively discussion on patent eligibility in Japan.
