A Study on the Status of Software Patent Protection in Japan– Comparison with Status in Korea (*)
Invited Researcher: YOO, Ji-Hye (**)
Software patents have been preferred by inventors, in that patents can give a very powerful and desirable
protection, so that the owner of patent may prevent any unauthorized person from making, using, or selling the patented
software invention. Software patents, on the other side, also have negative respects, including that it is hard to grasp thescope of patented invention. Software inventions usually claimed in the form of means-plus-function because it is hard to
be expressed by conventional ways such as structures, materials of invention. This way of claiming seems to make thescope of software patent more difficult to be understood, and the scope of claim could be overbroad than it should be. To
solve these problems, each country has been tried to give some standards such as the way that the scope of protection isinterpreted only to the extent that the persons ordinarily skilled in the art could work based on description concretely
disclosed in the specification. This interpretation rule seems to be applied in a same way in Japan and Korea, however,the specific standards would be different, and this difference could affect the status of software patent protection in eachcountry. In this respect, this research aims to analyze the status of software patent protection specifically in Japan and
Korea, especially focusing on the scope of claim for software invention, in order to have a better understanding of thescope of software patent protection.

I

Introduction

Computer software is an instruction for computer torealize some functions through steps for method. There
are algorithms as technical ideas, but the appearance ofsoftware is in the form of computer language withthousands of lines. And the technical ideas cannot bematched up with physical existence. Therefore, to reveal
the real shape of software invention by human language
seems to be hard, and we can just express software
invention as methods controlling something. This feature
makes harder for us to understand the boundary ofsoftware invention, and it could be ground the criticismsthat software patent could be expressed by vague words
and it could be the reason that makes the scope of patent
protection overbroad.1
In the other hand, patent system tries to make theinvention protected under patent law clear, using claim,
detailed explanation of invention, drawings, summary of
invention. As the rule set under patent law, thedetermination of what is the invention in a certain
application is based on the words in the claim, and thespecification2 is considered to understand the truth ofinvention. And the scope of patent protection, which is
the right to exclude other’s working in real (in this report,
it will be called ‘the scope of protection’), can be different
from the scope of invention, because to determine thescope of protection, the balance with alleged infringer
should be considered.

To demarcate the invention in the claim, the words
in claim and specification should be interpreted in aproper way. The general approach to interpreting thewords above could be expressed as following principles,such as “don’t read in limitations”, “refer the
specification”. They mean that the invention in the claim
should be determined by factors in only claim, but tounderstand the invention in the claim, such as tounderstand the meaning of words consisting of claims,
the specification can be referred.3 In other words, thewidth of claim should not be affected by specification.
However, there is an exception that if there areexpressions which may reveal the applicant’s intention
that restricts a word’s meaning and clearly disavows thebroader scope, the scope of invention in the claim would
be reduced by the expressions in the specification.4
This approach to the determination of the invention
in the claim is reflected in the Patent law of Japan and
Korea. However, to realize this approach, what specificstandards are applying could be different in each country,
and the result from difference of specific standards canmake the scope of protection in each country different.
Therefore, to discuss the status and scope of software
patent protection in Japan, there is a need to start fromgeneral principle for demarcating the scope of claim.

(*) This is a summary of the report published under the 2014FY Industrial Property Research Promotion Project (2014FY-2016FY) Entrusted
by the Japan Patent Office.
(**) Researcher/Lecturer, Kangwon National University, Korea, at our institute over a period of approximately 5 months from October 20,
2015 through March 19, 2016, as an Invited Researcher for the Fiscal Year 2015.
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IIP Bulletin 2016 Vol.25

1 ●II The status of software patent
protection in Japan
1

Overall
Software can be protected under Japanese patent law
in the case of where it is considered as a invention, “thehighly advanced creation of technical ideas utilizing thelaws of nature (Article 2, paragraph (1) of the Japanese
Patent Act (Act No. 121 of 1959)),” and it can be claimed
by various types of claim. It can be claimed by inventionof method and invention of product as well. Software
invention of product can be expressed by apparatus,
computer or system claim, and it can be claimed withcomputer readable recording medium, it also claimed
itself, computer program, data having a structure or data
structure.5 The type of computer program claim can besupported by Article 2, paragraph (3), item (i) whichstates that “a product (including a computer program, etc.,
the same apply hereinafter).” It is explained that thisstatute is for making clear that software invention can be
regarded as a product invention and transmission ofsoftware invention fall under the scope of working.6
In the other hand, despite of difference of types, theway of determination of the scope of claim, especially tofind out the meaning of expressions in the claim, doesn’t
seem to be very different from one another, but it isimportant to the concept of working. Therefore, to discuss
the status and scope of software patent protection in Japan,
there is a need to start from general principle fordemarcating the scope of claim. It can be discussed in
two respects, one is for understanding the invention in theclaim and deciding whether the invention could beconsidered better technical idea comparing prior art, theother one is for determining the scope of patent protection
for the invention from the standpoint of banning theother’s business.
2

Statutes and Guidelines
As for the scope of claim, Japanese Patent Act
provides that how to describe the invention in the claim,and how to recognize and accept the invention describedin the claim. For the description of the invention, it
provides that patent claim shall state all matters necessary
to specify the invention for which the applicant requests
the grant of a patent, and the claim shall be supported bydetailed explanation of the invention, and it shall be clear
and concise (Article 36, paragraph (5), (6)). For therecognition of the invention, it provides that technicalscope of a patented invention shall be determined based
upon the statements in the scope of claims attached to theapplication. And the meaning of each term used in thescope of claims shall be interpreted in consideration of
the statements in the description and drawings attached tothe application (Article 70). These statutes are for all
types of claim, including Means-plus-function claim●

which is frequently used for software invention, because
there is no statute for means-plus-function claim inJapanese Patent Act. This respect is different from U.S.
Patent Act, but same as Korean Patent Act.
Meanwhile, JPO provides the guidelines concerning
the scope of invention in the claim in the stage ofobtaining a patent right. It says that specifying theclaimed invention should be based on the description in
the claim, and the meaning of words in the claim isunderstood by considering the specification and thecommon general knowledge at the filing into
consideration, 7 and it uses same expression withJapanese Patent Act Article 70, paragraph (2). It provides
more specific guidelines for understanding the meaningof words in the claim, such as how to consider
specification in specifying the claimed invention. If there
are terms not correspond to the claim and specification,
the statement of claim become the object to examine thepatentability. The terms in the claim is interpreted basedon the usual meaning though, where meanings of theterms described in the claims are defined or explained in
the specification, the definition or explanation isconsidered. However, the statements of specification is
doing a role of examples or additional supplement, thestatements are not considered when the meaning in theclaims is interpreted.8
3

Cases
As for the scope of claim, there have been a lot of
discussions concerning whether the specification could beconsidered or not, under what circumstances it could beconsidered, the way of considering specification should
be different between claimed invention and patented
invention, or the way of considering specification should
be different between in the process of invalidation suit of
infringement suit, etc. Although this discussion iscontinued even now, it is explained that since sometime
the single standard became the leading opinion.9 And
this opinion would be supported by Kilby10 case judged
by Japanese Supreme Court and amending the Article
104 of 3, which could prevent the infringement of patent
which could be invalidated, and the recent supplement
opinion in the Supreme Court Judgment (2012 (Ju) 1204),
decided last year, concerning Product by Process claim
though, seems to show this trend.11
As for the scope of protection, Japanese Patent Act
Article 70, stated above, would be basic standard.
However, the scope of protection could be different fromthe scope of patented invention in that a balance withalleged infringer should be considered. Especially withregard to means-plus-function claim, the tendency thatthe scope of protection is limited to embodiment and theextent that persons who ordinarily skilled in the art canwork based on the embodiment, could be found.12

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4Discussions for Software Patent Protection
To discuss the software invention, it is needed toconsider characteristics of software that it is consist ofconceptual method such as algorithm, and it can include
range wide-abstract step from specific-concrete step withcomputer language. And it has high possibility that there
are a lot of functional expressions as specific informationin the specification as well, the functional expressions inthe specification could be more specific concrete thanfunctional expressions in the claim though.13
Therefore, the scope of software invention has beeninterpreted
under
the
way
of
interpretingmeans-plus-function claim. It seems to be the mostimportant character in determining the scope of software
patent protection, and it’s hard to find any other special
treatment or standard considering the feature of softwareor software invention in statutes, guidelines and cases
considering this respect.
However, it should be noted that the current rule forinterpreting means-plus-function claim has beendeveloped under cases almost concerns mechanic
invention or invention has specific structures,14 and thedifference of technical features between invention which
has specific structures such as mechanic invention andinvention which doesn’t have specific structures such assoftware invention, should be considered.

III The status of software patent
protection in Korea
1Overall
The software patent system in Korea seems quite
similar to Japan. To be patented the software should fallunder the concept of invention, “the highly advanced
creation of technical ideas utilizing laws of nature (Article
2, item (i) of Korean Patent Act (Act No. 13096 of 2015)).
And it can be claimed by invention of method andproduct, software invention of product can be claimed byapparatus, computer or system claim, and computerreadable recording medium.
However, it cannot be claimed software itself, and it
only can be claimed by computer program stored in themedium in order to solve a certain problem combinedwith hardware. It means that software invention cannot
claimed itself, even if it can be regarded as the highly
advanced creation of technical ideas utilizing laws ofnature. And Korean Patent Examination Guideline
provides that computer program as such is one example
of non-statutory invention.15 It can be read that Korean
patent system for software put emphasis on hardware insoftware invention.
2

Statutes and Regulations
Korean Patent Act provides that how to describe theinvention in the claim and how to recognize and●

IIP Bulletin 2016 Vol.25

determine the invention described in the claim in a similar
way to Japan. For the description of the invention, it
provides that “the claims shall state such matters deemednecessary to specify and invention as structures, methods,
functions and materials or combination thereof to clarify
what to be protected (Article 42, paragraph (6) of the
Korean Patent Act).” And it also provides that “the claims
shall be supported by detailed description and the claims
shall define the invention clearly and in detail (paragraph(4) of said Article).” For the recognition of the invention,
it provides that “the scope of protection conferred by apatented invention shall be determined by the subject
matters described in the scope of claims.”
KIPO provides the guidelines concerning the scopeof invention in the claim in the stage of obtaining a patentright. There are two concepts about this issue, “therecognition of the invention”, and “definition of theclaimed invention.” The first one concerns so-called“Don’t read in limitations” approach, and second one
concerns so-called “Refer the specification” approach.16
As for the first part, Korean patent examination guideline
provides that since “description of claims holds
significance in that the scope of protection of a patentright is determined based on the description,” “therecognition of the invention for which patent protection issought shall be made based on the description disclosed
in each of the claims.”17 As for second concept, we cansee the guideline on the way of definition of the claimed
invention, and it seems to be similar to specifying theclaimed invention of JPO’s guideline. According to theguideline, if the statement of claimed invention is clear,defining the claimed invention should be made as statedin the claim. The term in the claims is interpreted ashaving a general meaning and scope generally acceptedin the technical field. And if there are terms notcorrespond to the claim and specification, the statementof claim become the object to examine the patentability.
3

Cases
As for scope of claim, although Korean Supreme
Court has not shown consistent attitude, there could befound a tendency which seems to show that it’s harder toconsider the specification in determining claimed
invention in Korea comparing to Japan, could be found injudgments by Korean Supreme Court.18 It can be learned
from the statement like “in the case of where the scope ofclaim is clear under the statement of claim, the scope ofclaim should not be limited by specification," or "in thecase of where the term has a specific meaning and it isexplicitly define in the specification, it should beinterpreted in an objective and reasonable way by taking
into consideration of its technical meaning, taken together
with the common general knowledge at the time of filing,based on the general meaning of the terminology.”19
As for scope of protection, considering Korean
3 ●Supreme Court judgments, in determining the scope ofprotection, factors like legal stability for the third party,
can make the scope of protection narrower than the scopeof claim itself.20 And with regard to means-plus-function
claim, there seems to be a tendency that the scope ofprotection based on the description in the specification,and interpreted to the extent that the persons ordinarily
skilled in the art could work based on constitution
disclosed concretely in the specification.21 In this case,according the Korean Supreme Court, the person isconsidered as those who ordinarily skilled in the technicalfield concerning allegedly infringing invention, notpatented invention.22
4

Discussions for Software Patent Protection
In Korea, in that there are not many discussions
concerning the scope of software invention, it is hard tofind the special treatment for software, and it is justinterpreted
considering
thefeatureofmeans-plus-function claim. However, as for the scope ofprotection, Seoul High Court Judgment, 2001Na60578
which stated that “in determining whether there is an
infringement or not, the defendant should have worked
not only all the composition of the invention, but also
‘time-series and systemic relationship among thecomposition of invention’,” could be utilized as a tip indemarcating the scope of software patent protection.

IV Conclusion
1

OverallIn this research, the status of patent protection can beunderstood using two concepts, the scope of claim andthe scope of protection. The scope of claim can include
the concept of claimed invention and patented invention,and both of them logically should be considered same. It
could be regarded relatively stable concept in that it isdetermined under statement from applicant and generaltechnology at the filing. In other hand, the scope ofprotection could be regarded relatively variable concept,
in that it should be determined considering balance withalleged infringer.
As for overall protection status in Japan and Korea
seems to be similar to each other. However, the scope ofclaim could be interpreted differently in the process ofpatent examination in invalidation suit, and it can be said
that there is possibility that the gap between scope ofclaim and protection could be larger in Korea than inJapan.
2

In Respect of the Scope of Claim
To begin with, it can be said that in recognizing anddetermining the scope of claimed invention, basicallysimilar standards could be found, such as "the scope ofclaim is determined based on the claim", and “if there are●definition of term of the claim in the specification, theyshould be considered into understanding the meaning of
the term, the general principle.” However, as for the wayof treating the description of invention in the claim, it isexplained that the tendency which seems to show that it’sharder to consider the specification in determining
claimed invention in Korea comparing to Japan, is foundin judgments by Korean Supreme Court.23 Comparing
the expressions used in Patent examination guideline of
JPO and KIPO, the requirements for considering
specification of KIPO’s guideline seem to be stricter.
As for means-plus-function claim, basically similar
standards to each other could be found, such as “this typeof claim is treated as the whole products which have thefunction, characters etc. by the expression in the claimed
invention, however it can be reduced by statements inspecification, and common general knowledge.”
However, as for the way of treating the description in thespecification in understanding functional expression in
the claim could be stricter in Korea, like other types ofclaim, in that the expressions in the examination guideline
in Japan and Korea seem to show difference of attitudes.
This respect can affect the patentability of claimed
invention. If the claimed invention is in the technical field
in which prior art can be found easily, the patentability
could be lower. In the opposite case, the patentability
could be higher and there is possibility that there could be
more wide-broad patents in that technical field. Althoughthese wide-broad patents could be restricted to the scopeof protection by court, not all the patent disputes can becontended in court.
3

In Respect of the Scope of Protection
Since patent protection should be based on theinvention in the claim, the basic interpretation of thescope of patent would be same as the scope of claim. In
determining the scope of protection, however, since thebalance with alleged infringer should be considered, thescope of protection tends to be interpreted narrower than
the scope of claim itself. This is a basic tendency in eachcountry. Especially, as for Korea, it could be learned fromsuch cases which stated that “in the case of determinationof technical scope of invention under the statement in theclaim is obviously unreasonable referring thespecification, it should be interpreted under justice andequity, considering technical idea, specification, intent ofapplicant, and legal stability for the third party.” 24
According theses judgment, in determining the scope ofprotection, factors like legal stability for the third party,
can make the scope of protection narrower than the scopeof claim itself. In this respect, considering that there arepossibilities that the scope of claimed invention could beinterpreted wider in the process of examination, the gap
between the scope of claim and protection could be foundmore easily.
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4

In Respect of Software Patent
Since software patents usually have been claimed
using functional expressions, with regard to the scope ofsoftware patent, it is basically explained that in respect ofinterpretation of means-plus-function claim. And there is
no statute for interpretation of means-plus-function claim
separately under Patent Act in Japan and Korea, thegeneral rule for claim interpretation would be applied tosoftware patent basically. Therefore, in principle, thescope of claim for software would be interpreted based on
only words in the claim, and the meaning and scope of
meaning would be interpreted in light of common usage
and knowledge in the field of the art. If the words havespecial meaning or limited scope, and it is reflected in thespecification, these specialties could be considered, inboth countries. However, the requirements of description
for these specialties to be considered would be different,
and the thing and ground that the requirements in Korea
could be regarded stricter, is as it is said in the chapter 3
above.
In other hand, as for the scope of protection forsoftware, it doesn’t seem to be too much to say that it
would be interpreted based on the description in thespecification, in that the Courts in both countries havestated
that
the
scope
of
protectionformeans-plus-function should have been interpreted theextent to that persons who ordinarily skilled in the art
could work based on the concrete description in thespecification. That’s why the role of embodiment seems
to be very important in both countries. However, it should
be noted that the case law for the scope of protection formeans-plus-function claim has been developed fromcases concerning machinery invention or invention which
has concrete structures, and the feature of software
invention is different from them. Considering that thehistory of software patent is relatively short, the thing that
there aren’t many discussions on the interpretation withregard to software patent protection considering thefeatures of software, is not surprising. It is just to be
hoped that there will be more cases and discussions
concerning the technical features of software invention
and it will reflected into the rule of interpretation forsoftware patent claim and protection.

1

2

3

Peter Menell, It’s Time to Make Vague Software Patents More
Clear, WIRED (Feb. 7, 2013),
http://www.wired.com/opinion/2013/02/its-time-to-make-vaguesoftware-patents-more-clear/; Kristen Osenga, DEBUGGINGSOFTWARE’S SCHEMAS, 82 Geo. Wash. L. Rev. 1832,
1845-6 (2014).
In this report, specification will be used as the concept, which
includes detailed explanation of invention, drawings, summaryof invention, etc.
Robert Patrick Merges & John Fitzgerald Duffy, Patent Law and
Policy: Cases and Materials (Fifth Edition), LexisNexis, 2012,●

IIP Bulletin 2016 Vol.25

p.336.
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005),
cert. denied, 126 S. Ct. 1332 (U.S. 2006); CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002), etc.
5 JPO, Patent Examination Handbook, Annex B Part 1, Chapter 1,
1.2.1.1
6 JPO Webpage, 産業財産権法（工業所有権法）の解説、平成14年法律改正（平成14年法律第24号）、14-17頁、https://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h14_kaisei/h1
4_kaisei_1.pdf (last access: March 30, 2016).
7 JPO, Patent Examination Handbook, Part 1, Chapter 2, Section 1,
2.
8 JPO, Patent Examination Handbook, Part 3, Chapter 2, Section 3.
9 大渕哲也「統一的クレーム解釈論」中山信弘他編「知的財産権：法理と提言」224-225頁（青林書院、2013）
10 最高裁判所平成12年4月11日(平成10年(オ)第364号)
11 In this regard, 北田明ほか「発明の技術的範囲」と「発明の要旨認定」との間に、ダブルスタンダードは存在するか？」
パテント68巻12号136頁(2015) says that “Recent cases
judged by lower courts show the tendency that claim would beinterpreted in a same way in determining the scope of claimed
invention and patented invention as well. And in this respect 最判平成27年6月5日（平成24年(受)第1204号，平成24年(受)第2658号means a lot.”
12 東京高裁昭和53年12月30日判決(昭和51年(ネ)第783号),
東京地裁平成10年12月11日判決（平成8年（ワ）第22124号）；東京地裁平成16年12月28日判決(平成15年(ワ)第19733号) etc.
13 水谷直樹「機能的クレームの形式で記述されたソフトウェ
ア関連発明の技術的範囲」飯村敏明先生退官記念『現代知的財産法－実務と課題』522頁（発明推進協会、2015）
14 特許第2委員会第4小委員会「侵害訴訟における近年のクレーム解釈に関する研究－特に機能的クレームについて－」
知財管理66巻1号50頁（日本知的財産協会、2016）15 KIPO, Patent Examination Guidelines, Part3, Chapter 1, 4.1.8.
16 Robert Patrick Merges & John Fitzgerald Duffy, Patent Law and
Policy: Cases and Materials (Fifth Edition), LexisNexis, 2012,
p.336.
17 KIPO, Patent Examination Guidelines, Part2, Chapter 4, 2.
18 Kim, Byeong Pil, Using Description and Drawings in Claim
Construction in Korea and Comparison with Foreign Cases, The
Journal of Intellectual Property Vol.9 No.2 June 2014 Shows theflow and tendency of Korean Supreme Court, concerning therule of considering the specification of invention in determining
the scope of claim in the process of invalidation suit andinfringement suit.
19 In the other hand, there are different interpretations. For example,
Kim, Dong-jun, Considering the description of the invention ininterpreting patent claim, Journal of Korea Information Law,
Vol.16 No.3 December 2012, p.219-223 says that Korean
Supreme Court judgments also should be read that they didn’t
deny considering specification in determining the scope of theinvention in the claim and they were consistent. However,according to Kim, Byeong Pil’s analysis on the flow of
judgments by Korean Supreme Court, it seemed hard to denythat it could be found a tendency that different standards forconsidering the specification applied to the case of determinationof patent validity and infringement at least after 2010.
20
Korean Supreme Court Judgment 2005Da77350 Decided
February 28, 2008; Korean Supreme Court Judgment 96Hu1040
Decided April 10, 1998; Korean Supreme Court Judgment
2002Hu130 Decided November 28, 2003, etc.
21 知財高裁平成15年2月27日判決(平成12年(ネ)第4200号)
4

5 ●

22

Korean Supreme Court Judgment 2005Da77350 Decided
February 28, 2008
23 Kim, Byeong Pil, Using Description and Drawings in Claim
Construction in Korea and Comparison with Foreign Cases, The
Journal of Intellectual Property Vol.9 No.2 June 2014 Shows theflow and tendency of Korean Supreme Court, concerning the ruleof considering the specification of invention in determining thescope of claim in the process of invalidation suit and infringement
suit.
24 Korean Supreme Court Judgment 2005Da77350 Decided
February 28, 2008; Korean Supreme Court Judgment 96Hu1040
Decided April 10, 1998; Korean Supreme Court Judgment
2002Hu130 Decided November 28, 2003, etc.

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6 ●IIP Bulletin 2016 Vol.25