16 A Comparative Law Study on the Patent Eligibility
㸫Focus on the Method Invention㸫(*)
Research Fellow: Etsuko YOSHIDA
Inventions have shown variation in association with industrial development and progress in science andtechnology. Examples of such inventions are those of business methods that utilize computer technology based on
informatization and medical-related inventions such as gene screening methods accompanying the developmentof biotechnology. As a result, in the U.S., the issue of patent eligibility of business method inventions has led tothe increase in the number of litigations over patent eligibility and vigorous discussions have been conducted.
Similarly, in Europe, the way to conduct harmonization has been sought by using various methods including thereferral made by the President of the European Patent Office (“EPO”) with respect to the issue of patenteligibility of computer-software-related inventions due to the difference between the EPO and member states interms of the determination method for such issue.
In this research study, a comparative study will be made on the requirements for determining whether or
not an invention is statutory (patent eligibility) used in Japan, the U.S. and Europe based on the issue of patenteligibility in the U.S. as well as the transition in the trial and court decisions and the discussions that havetraditionally been developed in the U.S. and Europe,. In particular, with respect to process invention, the issue ofpatent eligibility is prominent in the fields of computer software and business methods and thus such field havemainly been dealt with. First, the trends in the U.S. court decisions that have been rendered in large numbers
over the last few years and that have become a major topic of debate will be examined. Specifically, the transitionin the determination method used in the U.S. will be studied by focusing on the relationship between the three
categories for non-statutory subject matter that have been used in determining patent eligibility and excluded
from patent protection, i.e. (i) laws of nature, (ii) natural phenomenon and (iii) abstract ideas, and past court
decisions. Transitions in the past trial and court decisions as well as discussions relevant thereto will be studied
with respect to the EPO, Germany, the U.K. and Japan. This research study aims to be of some help to the efforts
made for international systemic harmonization by considering the functions of the requirement for patenteligibility from the viewpoint of comparative law based on the abovementioned set of studies.

Ϩ Structure of this report
In making a comparative study on therequirements for determining whether or not aninvention is statutory (patent eligibility)1 used inJapan, the U.S. and Europe, past trends in thelegal system, judicial precedents and trial
decisions shall be reviewed in Chapter II and
Chapter III below.
In Chapter II, trends in the U.S. will be
studied. The determinations on patent eligibility
made in the U.S. shall be analyzed based on the
court decisions concerning Article 101 of the U.S.
PatentLaw(Inventions
patentable)(software-related inventions, business method
inventions and inventions of medical treatment
method). Next, the relationship between
non-statutory subject matters ((i) laws of nature,(ii) natural phenomenon and (iii) abstract ideas)
relevant to Article 101 of the U.S. Patent Law andtransitions in the past determinations on patenteligibility will be studied. In addition, matters
discussed in recent court decisions rendered in the
U.S. shall also be studied.
In Chapter III, trends in Europe will be
studied, covering the treatment of the issue ofpatent eligibility in the EPO, Germany and the
U.K. First, the determination method will be
studied based on the trial decisions related to
Article 52 of the Convention on the Grant ofEuropean Patents (“EPC”) rendered by the EPO.
The determination method for patent eligibility
will also be studied with respect to Germany andthe U.K.
Finally, in Chapter IV, a comparative study
will be made based on the results of the(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2014 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.
IIP Bulletin 2015 Vol.24● 108 ●

abovementioned studies. First, the determinations
on whether or not an invention is statutory basedon Article 2, paragraph (1) of the Japanese Patent
Act will be briefly marshaled and then, thefunctions of the requirement for patent eligibility
will be studied from the viewpoint of comparative
law based on the studies on the transitions in thetrial and court decisions as well as thedetermination method used and current
discussions made in the U.S., the EPO, Germany,
the U.K. and Japan.

method inventions are eligible for patent
protection. The State Street Bank decision (Fed.
1998)8 is one of the decisions that may serve as
an indicator for business method inventions.
9 10(2) Situation after the Bilski decision ,In this section, the situation after therendition of the Bilski decision that added
momentum to the discussion on patent eligibility
in the U.S. will be summarized (Table 1).

ϩ Discussions over patent eligibility
in the U.S.2
1

Patent eligibility in the U.S. Patent Law
3(Article 101)
Article 101 of the U.S. Patent Law prescribesthat if the relevant invention or discovery falls
under any of the four categories (i.e., process,machine, manufacture, or composition of matter),it has patent eligibility and such category may be
divided into two major types, i.e. product andprocess. In determining patent eligibility in the
U.S., focus is placed on the applicable test to
determine patent eligibility as well as whether or
not the relevant invention falls under any of thenon-statutory subject matters ((i) laws of nature,(ii) natural phenomenon and (iiii) abstract ideas)
relevant to Article 101 of the U.S. Patent Law.
2

Transition in inventions related tocomputer software and business methods
in the U.S.
4(1) Situation prior to the Bilski decision
Decisions of the Supreme Court of theUnited States (referred to as the “Supreme Court”
in this Chapter) dealing with computer software
inventions that have been rendered prior to the
Bilski decision date back to the Diehr decision(1981)5. At that time, the commercial Internet was
yet to be commenced and computer-implemented
inventions were extremely few, and the three
categories for non-statutory subject matter under
the current Article 101 of the U.S. Patent Law
were established based on the decision of theSupreme Court which held that basic principles
such as mathematic formulas may not bepatented.6 Over the following 30 years, until the
Bilski decision (2010) 7 was rendered, theSupreme Court did not deal with the issue ofpatent eligibility against the background of apro-patent policy. Meanwhile, Internet businessbecame popular from the mid-1990s and attention
was paid to the issue of whether or not business● 109 ●IIP Bulletin 2015 Vol.24

Table 1. Situation after the Bilski decision
October 30, 2008
en banc decision of the United States Court of Appeals for the Federal
Circuit (CAFC) in the Bilski case (denied patent eligibility)
June 28, 2010
Supreme Court Decision in the Bilski case (denied patent eligibility)
September 15, 2011 First decision of the CAFC in the Ultramericial case (approved patenteligibility)
March 20, 2012
Supreme Court Decision in the Prometheus case denied patent eligibilityof method of treatment)
July 9, 2012
First decision of the CAFC in the CLS Bank case (approved patent eligibility)
May 10, 2013
en banc decision of the CAFC in CLS Bank case (denied patent eligibility)
June 13, 2013
Supreme Court’s decision in the Myriad case (denied patent eligibility ofgene sequences)
June 21, 2013
Ultramercial case remanded to the lower court (approved patenteligibility)
September 5, 2013 Decision of the CAFC in the Accenture case (Issue: System claims alone;denied eligibility for protection)
March 4, 2014
The United States Patent and Trademark Office (USPTO) published a
guidance for eligibility for patent protection under Article 101 of the U.S.
Patent Law of claims reciting or involving laws of nature, natural
phenomenon and natural products.
June 19, 2014
Supreme Court’s decision in the CLS Bank case (denied patent eligibility)
June 25, 2014
The USPTO published the Preliminary Examination Instructions in view of
the Supreme Court Decisions in the CLS Bank case
The Bilski decision (2010) 11 was renderedwith respect to a business method invention. In
this case, the invention in question was a purebusiness method that does not use computers andattention was paid to the determinations on thepatent eligibility of such invention. The CAFC
maintained the trial decision rendered by the
USPTO by finding that the invention in questiondoes
notcomplywiththe“machine-or-transformation test” (hereinafterreferred to as the “MOT test”) and presented the
MOT test as the sole criteria for determination.
The U.S. Supreme Court, while denying theinvention’s patent eligibility as denied in thedecision rendered by the CAFC and finding thatthe invention claimed in the patent application inquestion is nothing but an “abstract idea” basedon past court decisions, held that the MOT test is
useful but not the sole test for determining patenteligibility of a process.
The Prometheus decision (2012) 12 wasrendered with respect to an invention of an
administration route. The CAFC adopted the
MOT test and determined that the invention inquestion has patent eligibility by finding thatphysical and chemical changes were produced in
the process of metabolism of drugs. However, thejudges of the Supreme Court unanimously denied
patent eligibility of such invention on the grounds
that protection was sought for the laws of nature
per se.

IIP Bulletin 2015 Vol.24(3) CLS Bank decision (2014)13
After the Bilski decision (2010) 14 wasrendered, the requirement for patent eligibility
received attention and opinions over suchrequirement were divided within the CAFC.
Amidst such situation, the Supreme Court
rendered the CLS Bank decision (2014) which
may be cited as the decision in which theSupreme Court presented a certain determination.
In this case, the invention in question was related
to a software patent relevant to a businessmethod which only allows secure transactions byconfirming whether or not both parties have theability to perform the obligations through a third
party intermediary (which is referred to astrusted third party or escrow) as well as thesystem thereof. The claims for such patentcontained process, apparatus and system and allof the claims were designed to be implemented bycomputers.
(i) Court decision (U.S. district court, en bancdecision of the CAFC and Supreme Court
Decision)In this case, on May 24, 2007, CLS BankInternational (“CLS Bank”) filed against Alice
Corporation (“Alice”) an action seeking
confirmation of invalidity of the patents held by
Alice (U.S. Patent No. 5970479, No. 6912510, No.
7149720 and No. 7725375) with the U.S. district● 110 ●

court of the District of Columbia. In response tothis, Alice filed a counterclaim by alleging
infringement of the patents by CLS. The outlineof Alice’s disputed patents is as follows: [i]business method for risk avoidance using anescrow;15 [ii] computer program apparatus having

May 24, 2007
March 9, 2011
July 9, 2012
May 10, 2013

storage means to confirm the performance ability
by using an escrow;16 and [iii] system to confirm
by computers the performance ability by using anescrow. 17 Transition in the CLS Bank decision
will be summarized (Table 2).

Table 2. Transition in the CLS Bank decision
CLS Bank filed an action while Alice filed a counterclaim
Decision rendered by the U.S. district court of the District of Columbia
First decision rendered by the CAFC
En banc decision rendered by the CAFC

The U.S. district court rendered a decision toinvalidate the patents in question based on thefollowing findings: [a] Alice’s patent mentioned in[i] above is nothing but an abstract idea and thus
does not have patent eligibility; and [b] while
Alice’s patents mentioned in [ii] and [iii] have
limitation on the apparatus and system, theirpractical contents are identical to the businessmethods per se and thus they are nothing but
abstract ideas and do not have patent eligibility. In
the first decision of the CAFC, in response to theappeal filed by Alice, the panel (comprised ofJudge Linn, Judge Prost and Judge O’Malley)
decided by 2-1 to reverse the decision of the U.S.
district court and approved the patent eligibilityof Alice’s patents mentioned above on the
grounds that all of the claims are directed toward
the practical application of the invention. Later,
the CAFC rescinded the first decision mentioned
above and, in the en banc decision of the CAFC18
that performed the rehearing, seven out of ten
judges denied patent eligibility with respect toAlice’s patents mentioned in [i] and [ii] above.
With respect to Alice’s patent mentioned in [iii]above, opinions were divided and the decision
rendered by the U.S. district court was upheld
without any change. Consequently, a uniform
standard could not be drafted and thus, this CAFC
decision is not binding as a judicial precedent.
In the Supreme Court decision, all of thejudges (nine in total) denied patent eligibility on
the grounds that the relevant invention covers
abstract ideas. In addition, the Supreme Court
referred to the framework presented in thePrometheus decision (2012) 19 to discriminate
inventions that only state non-statutory subject
matters from patent-eligible inventions that are
based on non-statutory subject matters and heldthat this framework also apply in this case. This
framework is structured by the following two parts
and is called the two part test. Specifically,

determinations are made on the issues of [i]whether or not the claimed invention falls under
any of process, machine, manufacture, orcomposition of matter; and [ii] whether or not theclaimed invention falls under the laws of nature,
natural phenomenon or abstract idea and whether
or not the added factor contains an inventive
concept that is sufficient to transform the claimed
invention into a patent eligible invention.
(ii) Significance of the CLS Bank decision
In this decision, although the Supreme Court
affirmed the en banc decision of the CAFC, twomajor significances may be found. The firstsignificance is that the Supreme Court showed its
clear stance regarding computerization of generalbusiness methods. In this case, the Supreme
Court held that the relevant invention does nothave patent eligibility since it is an abstract idea
such as settlement through a third party and does
not have an inventive concept necessary totransform the claimed abstract idea into a patenteligible invention. In other words, inventions thatare created by only having computers process
abstract ideas would be denied to have patenteligibility. Thus, this Supreme Court decision may
be regarded as having shown a certain indicatorfor business method inventions. The second
significance may be found in the point that, in
performing the determination test, the Supreme
Court not only cited the Bilski decision (2010)20
but also decided to apply the two part test
presented in the Prometheus decision (2012). 21
As a result, determinations on patent eligibility
would also cover “abstract ideas” and theSupreme Court may be regarded to have clearly
indicated its intention to apply the two parts test
in future cases. Subsequently, the USPTO
published Preliminary Examination Instructions 22
in view of the Supreme Court decision anddecided to adopt the two part test mentioned
above for determining the applicability of Article● 111 ●IIP Bulletin 2015 Vol.24

101 of the U.S. Patent Law for claims subject toexamination and to apply such test to abstract
ideas in addition to the invention in which thelaws of nature or natural phenomenon are claimed,in conformity with the U.S. Supreme Court
decision.
(4) Functions of Article 101 of the U.S.
Patent Law: “Inventions patentable”
Based on the trends in the past court
decisions, it may be found that the concept“ Inventions patentable “ is used to examine aninvention which solved a specific technicalproblem based on the wording “physicalembodiment or transformation.” For example,
even if a person discovers a native grass withhigh efficacy, such person may not obtain a patent
for the native grass per se but instead may obtaina patent for other factors related to such native
grass such as the process to extract the active
ingredient of such native grass or the application
process thereof. In sum, it may be regarded thatthe purpose of Article 101 of the U.S. Patent Law
is to transform the laws of nature, natural
phenomenon and abstract ideas into practicaltechnologies that are useful for human being. In
other words, moreover, it may be considered thatsuch concept is used to determine how therelevant invention has been converted into a
useful invention that has been defined by common
scientific knowledge. Thus the requirement forpatent eligibility may be found to be performing a
restrictive function to maintain the normative
matters of the patent system and a function tosecure the qualitative basis thereof.

Ϫ Discussions over patent eligibility
in Europe23
1

Transition in the determination method
used by the EPO
In Europe, Article 52 of the EPC24 prescribes
patentable inventions and those which may
excluded from the category of “inventions.”
Currently, the determination on patent eligibility ismade by determining whether or not the relevant
invention has “technical character”25 and then theinvention is found to have patent eligibility if it
does not fall under the exclusions prescribed insaid Article.
Many trial decisions rendered over patenteligibility dealt with the issue of whether or not
the relevant invention falls under the exclusions
prescribed in Article 52 of the EPC and inparticular, the construction of computer programs

IIP Bulletin 2015 Vol.24“as such” was the focal point.26 Until the 1990s,
the court adopted the technical contribution
approach and from around 2000, the court started
to adopt the means of determining whether or not
the invention has technical nature. This change inthe EPO’s determination method affected thedetermination on patent eligibility of computer
software related invention in the U.K. mentioned
below and as a result, the President of the EPO
made G3/08 referral27 to the Enlarged Board of
Appeals, questioning the consistency in the EPO’s
determinations on patent eligibility of computer
software related inventions.
(1) Referral to the Enlarged Board of
Appeals (G3/08)
The President of the EPO took it seriouslythat no consistency could be found in thedeterminations made in past trial decisions
concerning patent eligibility of computer programs(i.e. T1173/97: IBM trial decision, T424/03:
Microsoft trial decision and T258/03: Hitachi Trial
Decision) and made referral to the Enlarged Boardof Appeals on October 22, 2008. However, in May
2010, the Enlarged Board of Appeals determinedthat all of the questions did not satisfy therequirements for referral to the Enlarged Board of
Appeals (Article 112, paragraph (1) of the EPC)
and showed its stance to support the EPO trial
decisions by daring to state its opinion that there
are no discrepancies in the trial decisions in thecourse of the development of laws (G3/08).28
2 Germany(1) ConceptofpatenteligibilityinGermany29, 30
One of the important German decisions thatis referred to in the Guidelines for the
Examination Procedure of Germany to serve as a
guideline for determining patent eligibility is XZB
11/98 (Logikverifikation; logic verification;1999) 31 , 32 . In this case, the court stated that“even if the means to solve the problem does notdirectly utilize controllable natural forces, if it
develops the possibility of manufacturing usefulproducts by making use of knowledge based ontechnical considerations, such means to solve theproblem would, by no means, be excluded frompatent protection.” Accordingly, there is a common
concept concerning patent eligibility in German
decisions that the technical problem must bepresented and solved rather than technical means
being used. 33, 34 This means that a patent rightwould not be granted if the means used in theinvention only solves problem other than technical● 112 ●

problems such as problems found in economic
activities.
3 U.K.
(1) Concept of patent eligibility in the U.K.35
Since a common law system is adopted in the
U.K., future court decisions would be bound by
precedents. In the past, court decisions weredeveloped by citing the trial decisions rendered by
the EPO. However, the U.K. court held in the
Aerotel & Macrossan decision (2006) 36 that the
EPO’s policy change since 2000 has no
consistency and adopted the Four Part Test
(Aerotel test)37 as its own determination method.
In the U.K., in determining patent eligibility, theinvention’s contribution must be determined, andbased on the determination on novelty andinventive steps, the invention’s technicalcontribution to prior art shall be determined.

ϫ Comparative study -Based on
the trends in Japan, the U.S. andEurope1

Determination on whether or not aninvention is statutory in Japan(1) “Creation of technical ideas utilizing thelaws of nature” as prescribed in Article
2, paragraph (1) of the Japanese PatentAct
In the Japanese Patent Act, Article 1
prescribes the purpose of the Act while Article 2,paragraph (1) defines inventions; an “invention” isclearly defined to mean a “highly advanced
creation of technical ideas utilizing the laws ofnature.” Currently, with respect to “the laws ofnature” as prescribed in Article 2, paragraph (1) of
the Japanese Patent Act, “the laws of nature” isregarded as referring to fundamental rules andprinciples that have physical, chemical or
biological rules such as mere mental activities,
simple academic rules and man-made agreements.
Yet, technical ideas utilizing such fundamental
rules or principles are regarded as inventions38, 39.
The examination guidelines clearly lists mere
mental activities, simple academic rules andartificial agreements as the typical examples to be
excluded. In addition, the issue of whether or not
an invention is statutory is determined by grasping
the invention in whole stated in the claims.40(2) “Inventions” to be protected as patents-Based on the transition in court
decisionsWhen the transition in the court decisions

concerning the requirement of “utilizing the lawsof nature” in Japan is examined, among process
inventions, computer software-related inventions
are often subject to the issue of whether or notthey satisfy the requirement of “utilizing the lawsof nature” 41 , 42 . For example, the Intellectual
Property High Court found that an idea which
utilizes mental activity of a human being is aninvention utilizing computer software as thetechnical means (Interactive dental treatment
network case; judgment of the Intellectual
Property High Court of June 24, 2008, (Gyo-Ke)
No. 10369). In this case, the court held that themere indication of the mathematical calculation
procedure or recording of data in generalcomputers cannot be found to be a creation oftechnical ideas “utilizing the laws of nature.” 43Thus, The requirement for patent eligibility
functions to objectively define “invention” that iseligible for patent protection in a flexible mannerin response to new technologies and theirdevelopment based on the mitigative constructionof the requirement that an invention must be a
“creation of technical ideas utilizing the laws ofnature” while serving as a basis for determining
patentability in terms of novelty and inventive
steps.
2

Patent system and the determination onwhether or not an invention is statutory(patent eligibility)
Since the Patent Act is a law in which theprotection and use of inventions are placed at thecenter of its purpose 44 and its framework is
closely related to innovation on a continuous basis,
flexible responses must always be made to theneeds of the time. In examining the invention’s
subject matter that is eligible for protection, if theconcept of inventions is fixed by clearly defining
inventions, it would be difficult to respond to the
new needs of the time.45 Moreover, a conclusionthat is against the purpose of the patent systemshould not be reached. However, if therequirement for an invention to be statutory(patent eligibility) is considered based on thestandpoint of protection and use of inventions by
returning to the purpose of the patent system,
such requirement may be considered as
representing an issue of “monopoly” and“dedication to the public” of “proprietary
information” which is an invention. In other words,
even if there are difference in terms of the legal
system and political aspects, the direction to aim
for is the same.

● 113 ●IIP Bulletin 2015 Vol.24

3Functions of the requirement for patenteligibility considered from the current
situation
The comprehensive function of therequirement for an invention to be statutory(patent eligibility) shall be considered based on
the analysis of current situations. The firstfunction is the “normativeness” with respect tothe system of determining whether or not aninvention is statutory (patent eligibility). Thismeans that the requirement for patent eligibility
functions to protect the norms of the patent
system which can be easily understood from thefact that some kind of basis provisions or
guidelines are developed in order to achieve thepurpose of the patent system. The second
function is the “valuation” to serve as the basic
material for determining novelty and inventive
steps. This shows that the requirement for patenteligibility functions to secure the qualitative basisof the patent system. The last function is the“harmonization” provided to each country. The
fact that the function of valuation produced by therequirementforpatenteligibility
wasreconsidered in the U.S. provided the opportunity
to reevaluate their own systems in Europe andJapan. As a result, the requirement for patenteligibility may be regarded as functioning toconfirm consistency with the patent system while
encouraging harmonization between the countries.

Ϭ Conclusion
In this paper, the respective requirements fordetermining whether or not an invention is
statutory (patent eligibility) used in Japan, the U.S.
and Europe were studied from a comparative
perspective based on the major changes in thedeterminations on patent eligibility in the U.S. As
aresult,althoughtheabovementioned
requirements pose a problem to find out thenecessary requirements for protection eligibility
such as “the contents of subject matter eligible forpatent protection,” in reality, such requirements
may be understood as posing an issue of clarifying“the invention’s specific parts subject to monopoly
or dedication to the public.” The requirement forpatent eligibility further functions to contribute to
the determination concerning the requirements forpatentability by evaluating the basic principles of
the technical information to be monopolized andthe social activities to be dedicated to the publicwith respect to proprietary information andthereby defining the outer limits of the invention.
The current issue of protection eligibility

IIP Bulletin 2015 Vol.24

faced in the U.S. was caused by the occurrence ofsituations where conventional determination
tests were insufficient to respond and as a result,a two part test was adopted based on the deeply
rooted ideas developed over the ages
(non-statutory matters) in the U.S. The direction
led by this determination test is in harmony withthe concepts used in Europe and Japan. Yet, in
terms of the solution of the technical problem, theissue of whether or not the relevant invention
exceeds the basic principles per se in social
activities is determined based on its technicaleffects in Europe and the U.S. In contrast, in Japan,
the technical significance of the invention is foundin the specific method used for realizing theinvention and if such technical significance is
specified in the claim, the relevant invention isfound to be statutory. Assuming the objective
evaluation of the invention, the method of finding
the technical significance of the relevant invention
in the fact that the specific method for realizing theinvention is specified in the claim is responsive tothe modern advanced information society. 46 In
addition, since the balance adjustment with theadvanced information society is expected tocontinue in the future, it would be necessary toreview the consistency between the patent systemand the framework for objective evaluation of theouter limits of the scope of invention to beprotected.
As described above, there is a sign of achange in the past situation where Japan andEurope sought harmonization with the U.S. which
had taken the lead in the field of intellectual
property as the major power. In other words, thepast stance taken by Japan, which has been dealing
with the issue of patent eligibility on a neutral
footing, is expected to possibly provide a new
solution.47

1

In the discussion on eligibility for patent protection, twoconcepts are used; “eligibility” for considering whether
or not the relevant invention contains subject matter
eligible for patent protection and “patentability” forconsidering the possibility of establishing a patent(novelty and inventive steps). In the U.S., consideration
is made on “eligibility” while in European countries
including Germany, in many cases, consideration is madeby attaching more weight o’n “patentability” than on“eligibility” in discussing patent eligibility (Germany:
Patentfähige). In the U.K., the issue is expressed by theterm “patentable subject matter” and consideration ismade based on “eligibility” and “patentability.”2
For details, see the co-edited report by the Institute ofIntellectual Property, Akira Ojima “America no Saiksai
Hanrei wo Yomu – 21 seiki no Chizai Bijinesu Hanrei
Hyoushaku Shu (Interpretation of the U.S. Supreme● 114 ●

Court Decisions – Collection of commentaries on theintellectual property and business related court decisions
in the 21st century)” [Collection of Research Studies of
IIP] (2015) at 44-139; Yoshikazu Tani, Kenji Ushiku,
Masashi Shinkai, Hidedhito Kawano “Sekaino Sofutowea
Tokkyo – Sono Riron to Jitsumu (Software patents in theworld – Its theory and practice-)” (Japan Institute for
Promoting Invention and Innovation, 2013)3
Article 101 of the U.S. Patent Law: Whoever invents or
discovers any new and useful process, machine,
manufacture, or composition of matter, or a new anduseful improvement therefor, subject to the conditions
and requirements of this title.
4
John F. Duffy “Rules and Standards on the Forefront ofPatentability” William & Mary Law Review.
51,609-653(2009).
5
Diamond v. Diehr 450 U. S. 175 (1981).
6
As early precedents, refer to Benson, 409 U.S. 63, 72(1972); Parker v. Flook, 437 U.S. 584, 198 USPQ 193(1978).
7
Bilski v. Kappos, 130 S. Ct.3218 (2010).
8State Street Bank and Trust Company v. Signature
Financial Group, Inc. (149 F.3d 1368 (Fed.Cir. 1998)
9
Joshua D. Sarnoff “Patent-Eligible Inventions afterBilski: History and Theory” Hastings Law Journal, 63,
53-125(2011).
10
DONALD S. CHISUM, CHISUM ON PATENTS §1.03[6][n](2013).
11
Bilski v. Kappos, 130 S. Ct.3218 (2010).
12
Mayo Collaborative Services v. Prometheus Laboratories,
Inc. 132 S. Ct 1289 (2012).
13
Alice Corp. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014).
14
Bilski v. Kappos, 130 S. Ct.3218 (2010).
15
U.S. Patent No. 5970479 (Claim 33).
16
U.S. Patent No. 7725375 (Claim 39).
17
U.S. Patent No. 7725375 (Claim 26).
18
CLS Bank Int’l. v. Alice Corp., 717 F.3d 1269 (Fed. Cir.
2013).
19
Mayo Collaborative Services v. Prometheus Laboratories,
Inc. 132 S. Ct 1289 (2012).
20
Bilski v. Kappos, 130 S. Ct.3218 (2010).
21
Mayo Collaborative Services v. Prometheus Laboratories,
Inc. 132 S. Ct 1289 (2012).
22
http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf.
23
Nobuyuki Taniguchi, “Compyt Sofutowea Kanren
Hatsumei ni Okeru Higijutsuteki Tokuchou no Hyouka
no Genjou to Kadai (Current situation and issues ofnontechnical features of computer software-related
inventions” Takeda Minoru Sanju Kinen “Chizairikkoku
no Hatten he ((For the development of an intellectual
property-based nation; publication of articles incommemoration of the 80th birthday of Minoru Takeda)”
at 739 (Japan Institute for Promoting Invention andInnovation, 2013) has analyzed in detail the theory andpractice in Europe from the standpoint of a practitioner.
24
Article 52 of the European Patent Convention<https://www.jpo.go.jp/shiryou/s_sonota/fips/pdf/epo/
mokuji.pdf> (2015/03/31)(1) European patents shall be granted for any
inventions, in all fields of technology, provided thatthey are new, involve an inventive step and aresusceptible to industrial application.

(2) The following in particular shall not be regarded as
inventions within the meaning of paragraph 1:(a) discoveries, scientific theories and mathematicalmethods;(b) aesthetic creations;(c) schemes, rules and methods for performing
mental acts, playing games or doing business, andprograms for computers;(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of thesubject-matter or activities referred to therein only tothe extent to which a European patent application orEuropean patent relates to such subject-matter or
activities as such.
25“Technical character” is also called “technical features”
and although it may not be read from the provisions, adetailed explanation is provided in Rules 42 and 43 of
the Implementing Regulations to the European Patent
Convention and G-I2(II) of the Guidelines for
Examination in the European Patent Office
26
Benkard/ Melullis, Europäisches Patentübereinkommen,
2. Aufl. (2012), EPÜ Art. 52 Rn. 190-199.
27
Referral to the Enlarged Board of Appeals: OJ EPO
2009, 32, Opinion of the Enlarged Board of Appeal withrespect to the referral: OJ EPO 2011,10.
28
OJ EPO 2011, 10. For explanation, see Jun Sugiura,
Seiko Saku, “Compyt Sofutowea Kanren Hantsumei ni
Kansuru Nichi Bei Ou no Shinsakijun to Tokkyo
Tekikakusei
Youkenni
Kansuru
Kousatsu(Consideration on the examination guidelines used inJapan, the U.S. and the E.U. and patent eligibility
requirements with respect to computer software related
inventions)” Chizaiken Forum Vol. 84 (2009) at 27.
29
Michele Baccelli, Markus Müller, translated by
Mitsuyoshi Hiratsuka and the Secretariat of AIPPI,“Computer implemented inventions in Germany and acomparative view with the EPO” AIPPI (2010) Vol. 55
No. 12 at 12 to 24.
30
Schulte/ Moufang, Patentgesetz mit EPÜ (Kommentar),
9. Aufl. (2014),”Patentfahige Erfindungen,” Rn. 131 to133.
31
GRUR 2000, 498; 33 IIC 2002 231.
32
Yasuhide Ono, Kazuo Harada, Kenji Ushiku “Doitsu
Saikou Saibansho ‘Rojikku Kenshoho’ Jiken (“‘Logic
verification’ case in the German Supreme Court”)”
Patent Vol. 55 (2002) at 21 to 30.
33
Schulte,ibid, Rn. 134.
34
Katsuya Tamai “‘Hatsumei’ no Gainen – Tokuni
Shinposei tono Kanren ni tsuite- (Concept of‘Invention’ - Especially in relation to inventive steps-)”Monya Nobuo Koki Kinen Chitekizaisanho to Kyosoho
no Gendaiteki Tenkai (Recent development of theacademic disputes on the intellectual property laws
and the competition law: publication of articles incommemoration of the 70th birthday of professor Dr.
Nobuo Monya) on pages 147 to 148 (Japan Institue for
Promoting Invention and Innovation, 2006)
35
Brad Sherman “The Patentability of Computer-related
Inventions in the United Kingdom and the European
Patent Office” [1991] 3 EIPR 85.
36
Aerotel Limited v Telco Limitd; Macrossan’s
Appication [2007] R.P.C.7; [2006] EWCA Civ 1371.

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37

See UK Intellectual Property Office, Manual of Patent
Practice-Patent Act 1977, Part 1: New Domestic Law,
Patentability, Section 1: Patentable inventions (Jan.
2015), at 1.18.
38
Nobuhiro Nakayama “Tokkyohou (Patent Act)” at 98 to
102 (Koubundou, 2nd ed., 2012).
39
Ryu Takabayashi “Hyoujun Tokkyohou 5th ed.
(Standard Patent Law 5th ed.)” at 26 to 33 (Yuhikaku,
5th ed., 2014).
40
Japan Patent Office “Examination Guidelines for Patentand Utility Model” Part II, Chapter 1, 1.1 (4); Revisionof the examination guidelines in 1997: Protection ofrecording medium in which programs are recorded,
Revision of the examination guidelines in 2000:
Handling of computer programs as “product invention.”41
Yoshiyuki Tamura, “Tokkyo Hatsumei no Teigi –’Shizen
Housoku no Riyou’ no Igi (Definition of Patented
Inventions –Meaning of “Utilization of the Laws of
Nature”)” Hougaku Kyoushitsu, 2001, Vol.9 at 13 to 18.
42
Ryuta Hirashima, Sofutowea Kanren Hatsumei ni okeru
Shizen Housoku Riyousei no Hyouka ni tsuite –Kairo
Shimyureishon Houhou Jiken wo Tancho to shita Kento(Regarding the determination on the utilization of thelaws of nature in software-related invention–Consideration based on the circuit simulation methodcase)” Chiteki Zaisanho Seisakugaku Kenkyu No. 20(2008) at 65 to 95.
43
Judgment of the Tokyo District Court of January 20,
2003, 2002 (Wa) 5502 (Case of funds classification
balance sheet), judgment of the Tokyo High Court ofDecember 21, 2004, 2004 (Gyo-Ke) 188, Hanji No. 1891
at 139 (Circuit simulation method case), judgment of theIntellectual Property High Court of February 29, 2008,2007 (Gyo-Ke) 10239 (Hash function case).
44
Nobuhiro Nakayama and Naoki Koizumi, eds.,“Shinchukai Tokkyohou Jou (New Explanation on the
Patent Law First Volume)” at 11ࠝHirashimaࠞ(Seirin
Shoin, 2011).
45
supra note (38) at 98.
46
Nobuyuki Taniguchi, supra note 23 at 761 : This paper
supports the modest determination on protection
eligibility and the Japanese practice in evaluating
inventive steps on the grounds that the dichotomy
between technical and nontechnical has become
ineffective in evaluating inventive steps of computer
software inventions.
47
I would like to express my gratitude to theintellectuals who provided meaningful advices inadvancing this research study. Prof. M. Adelman,
Former Chief Judge R. R. Rader, Prof. T. Takenaka, Mr.
B. LaMarca, Prof. J. Sarnoff, Dr. B. Liu from the U.S.
Dr. K. Grabinski, Dr. R. Moufang, Prof. J. Straus, Dr. R.
Nack, Dr. T. B. Koch, Dr. A. Petersen-Padberg, Mr. R.
K. Kuhnen, Ms. S. Yoshida, Dr. S. V. Steinbrener, Dr. C.
Karl, Dr. H. Goddar, Mr. C. W. Christian, Dr. Dr. J.
Krauß from Germany. Prof. Sir. R. Jacob, Prof. D.
Matthews, Prof. U. Suthersanen, Mr. G. Fennell. Ms. K.
Minami from the U.K. Prof. R. Takabayashi, Mr. Y. Aita,
Mr. T. Iimura, Mr. N. Taniguchi, Mr. M. Nonaka and
Dr. C. Rademacher from Japan.

IIP Bulletin 2015 Vol.24● 116 ●