16

A Study of Patentability of Computer Software-Related Inventions－ Practice in U.S., Europe and Japan and Outlook for China －Invited Researcher: Junqiang Zhou（*）
Software is a global business. Computer software has the dual nature: the Copyrightability and the
Patentability. The features of the computer program away from the traditional opinion that software is just theimplementation of mathematics logical algorithm. With the development of software industry, software has
become an indispensable tool for human to solve problems or realize some functions, with some essential
elements required by the patent law, such as “technology” and “non-obviousness”.
The proposed paper will review the exploring and practice of software-related inventions patent case law inUSA. It will compare the legislation and the examination guiderlines about the patentability of software-related
inventions between USA, JP and EU and, study substantive requirements for software-related invention patent,
specially the requirement of “non-obviousness” of software-related inventions in USA, JP and EU. Finally, it
will give the status and the future about the protection of software-related inventions in China, including theprospect and suggestion about software under protection of patent system in China. At end of the paper, it willbring forward some conclusions and questions of the author.

Among the brilliant achievements in thedevelopment of human civilization are theinventions of the number system, the computing
method and computing tools, the significance of
which lies in the fact that the inventions have
served as a foundation more important than thethree most significant inventions by mankind (fire,
the wheel and the bank).(*1) The computer, as amachine capable of controlling other machines, isplaying a special role in our production and life
nowadays. Software, as the brain of the computer
and the soul of the Internet, is playing an evenmore critical role. However, arguments about thelegal protection model for software have neverceased. Although there has started to be atendency worldwide toward patent protection

nowadays, this is still far from becoming a
consensus in developed countries like the U.S.
and Japan. Consequently, it is extremely
necessary to conduct a study of this issue fromboth the theoretical and practical points of view.

Ⅰ Concept of computer softwareand the protection model
1

Concept of computer software relative tohardware

Until now there has been no unified
definition regarding the concept of computer
software.(*2) According to engineers who are
actually engaged in the design of the computer(*) Attorney at Law, Associate Professor of School of Law of Anhui Normal University, P.R.C.
(*1) Guangdong New Oasis Life Science & Technology Co., Ltd: All competitions of modern science and technology boil
down to the competition of algorithm. http://www.bioisland.com/(*2) According to the online dictionary of Office 2000, Microsoft defines software as “programs and applications that canbe run on a specific computer system, e.g. word processing or database packages.” This definition seems to focus theintrinsic nature of software on databases or products. Cambridge University holds that there are at least two
definitions regarding computer software, one in British English and the other in American English. The definition in
British English is “the instructions which control what a computer does; computer programs, e.g. we write a piece ofsoftware to analyze text,” and the one in American English is “the instructions which control what a computer can do;computer programs, e.g., education software.” The fourth edition of the American Traditional English Dictionary
defines software from the viewpoint of science and technology as “software, computer programs: programs, routine
instruction series and encoded languages to control the computer hardware functions and operations.” Random House
Webster’s Collegiate Dictionary gives a relatively eased definition as “software: 1.a. the programs used to direct theoperation of a computer or process data, as contrasted in whole to hardware; b. documentation; 2. any materials use
with mechanical or electronic equipment, especially audio-video materials, as films, tapes, records, etc.” Merriam
Webster Collegiate Dictionary defines software as “something used or associated with and usually contrasted withhardware: as a: the entire set of programs, procedures, and related documentation associated with a system andespecially a computer system; specifically : computer programs b: materials for use with audiovisual equipment.”

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system, software and hardware are designed as anintegral part in a unified way.(*3)
In view of the relativity between “soft” and“hard,” software may also mean different thingseven in the field of computer science if judged
from intellectual property protection; normally,“software” viewed from the aspect of copyright
extends further than “software” viewed from the
aspect of patent. As the object of copyrightprotection, normally “computer software” includes
not only the “computer program” but also its
related files; but when computer software istreated as the object of patent protection, only
computer software is included while its related
files are not included.
From a historical point of view,thedevelopment of the computer underwent fourstages in general. In the first three stages,
software and hardware were indivisible as anintegral part. That is, each particular computer
system was one in which the particular hardware
system and the particular software system werecombined with each other, with the particular
hardware system matching only the particular
software system, and vice versa. It was not until
the fourth stage that IBM started trying to sell
software and hardware separately and major
companies injected more and more funds forsoftware development, which also made people
attach more attention to computer software.
Nevertheless, software must be used with acomputer and hardware makes no sense if
software is absent. Moreover, along with thedevelopment of the SLSI technology and progressin research on the fifth-generation computer, it
has become a common phenomenon for software
to become part of hardware and vice versa. Fromthe very beginning, hardware and software havebeen two parts indivisible from each other in thecomputer system, and on top of that, the twointeract with each other and constitute a common
system for a common purpose.
2

Duality of software and its protection
model(1) Copyright grantability and patentability
Since the Philippines took the lead in
stipulating in its copyright law in 1972 thatsoftware can be granted copyright, copyrightprotection has been the most important means forsoftware in addition to its own encryption
technology. The WIPO, too, issued the “Methodof Demonstration for Computer Software
Protection” and the “Computer Software
Protection Treaty” in 1978 and 1983 respectively,
recommending computer software protection
through the copyright law. Furthermore, in
Article 10.1 of the TRIPs agreement, it is directly
required that computer software be protected as
literary works by the copyright law.(*4)
Software itself has the “characteristics of awork” and it is easy to link it to copyright. Judged
from the form of expression, computer software,with no difference from ordinary literary works,
can be expressed by various languages (computer
programming languages of various kinds, some ofwhich are close to natural languages) and signs,
fixed on all the carriers which carry literaryworks, and easily duplicated like literary works.
And as to creativity (also referred to as
originality), reproducibility and expressivity,
computer software can completely satisfy thesethree requirements, and therefore it is logical toprovide protection for computer software throughthe copyright law.
However, we cannot tackle the issue only
from the viewpoint of the form of computer
software. Software also has its “functionality” at
the same time and the value of software lies in its
inherent technical idea. Among the three major
right categories of intellectual property, thepatent right has the closest relationship with thedevelopment of science and technology. A piece of
valuable new software must satisfy novelty,
creativity and utility as required by the patent
law; otherwise, there is no necessity to provide
legal protection for it.
(2) Comparison between the two types ofprotection models
The two protection models, copyright andpatent, are different from each other in the startpoint, purpose and principle, and the object to beprotected, too, is totally different if judged by thefundamental nature.
First, as the object of copyright, a work acts
on a person, namely a natural person, whereas
what computer software acts on is a product,
namely computer hardware.

(*3) GREGORY A. STOBBS: Software patents (Second edition), Aspen Publishers, Inc. A Wolters Kluwer Company
2004,p10.
(*4) Article 10.1 of the TRIPS Agreement reads:“Computer programs, whether in source or object code, shall beprotected as literary works under the Berne Convention(1971).”● 131 ●IIP Bulletin 2006

Second, as the object of copyright, thefunction of a work is to convey ideas to people,
whereas the function of software is to drive
hardware so that it can bring about an actual
movement, mechanical or electronic.
Third, as the object of copyright, a work has
the strong personal characteristics of its author,
reflecting its author’s recognition and opinion oflife and society; it can be profound or superficial,correct or erroneous, or even against natural law;
there is no necessity for it to be verified throughpractice and to bring about actual effects; so longas it is the expression of the author’s own
thoughts, it satisfies the characteristics of a workand fulfills the function that a work should have.
But computer software is different. Judged fromits nature, computer software is designed byusing natural law and it must conform to and notcontradict natural law, and what is more importantis that it must be applied to objective practice, be
verified through practice and bring about actual
effects.
Fourth, people buy a work to read or view for
the purpose of understanding its author’s
thoughts. And it is by disseminating the thoughts
to its users (this means readers or audience inthe case of a conventional work) that a work
realizes its value. However, computer software
does not present its programmer’s thoughts topeople and the program itself, whether theoriginal code or the target code, is even invisible
to people.

Comparison of Related Factors under Two Protection Models for Computer Software
When computer software becomes
the target of copyright protection
Item to beComparedContent tobe compared

When computer software becomes
the target of patent protection

Conven-tional Computer Computerwork
software software

Conven-tional
invention

Item to beComparedContent to becompared

Whether the expression ofthought is required

Yes

No

Yes

Yes

Whether it is required
to provide expressionof thought

Whether the expression ofthought is protected

Yes

Yes

No

No

Whether the
expression of thought
is protected

Whether the disseminationof thought is required

Yes

No

Yes

Yes

Whether the
dissemination ofthought is required

Whether the expression ofthought itself is protected

No

No

Yes

Yes

Whether the
expression of thought
itself is protected

Whether it is possible tochange without permission

No

No

Yes

Yes

Whether it is possible
to change without
permission

What the target of action is

PersonProduct

Product

Product

Creativity(originality)

Yes

Yes

Yes

Yes

Novelty

Substantial
Expressivity
requirement

Yes

No

Yes

Yes

Creativity

Yes

Yes

Yes

Yes

Utility

Reproducibility

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What the target ofaction is

Substantial
requirement

Ⅱ Research on and practice ofcomputer software patentability
In the field of computer science, the U.S. has
unrivaled power in both hardware and software.
The U.S. has always played the role of “method
explorer” and “principle formulator” regarding
intellectual property protection, including patent
protection, of computer software.
In 1966, in its report submitted after one
year’s investigation and research, a special
commission appointed by the U.S. president heldthat computer software should not become thetarget of patent protection.
The report pointed out the following four
reasons therefor. First, computer software does
not fall under patent protection, as it is not amethod in the sense of the patent law; second,
there is no necessity to provide patent protection,
as the advent of computer softwaretechnology did
not depend on patent protection at all at the very
beginning; third, computer software has alreadybeen protected by other laws, as copyright andtrade secrets have already provided protection for
it; fourth, there exist no examination conditions
for computer software, as there are no conditions
for the patent office to examine computer software
patentability.(*5) Consequently, the USPTO used aunified response to process patent applications ofcomputer software, i.e., no software should be apatentable subject matter.(*6)
In the appeal of the Diehr case,(*7) the court
held that patentability should not be excluded
simply because computer software is involved,
noting that in an invention which uses amathematical formula or an algorithm, thesoftware invention is patentable as a whole if it isintegrated with other devices or processes. This
was the first case in which the Federal Supreme
Court confirmed for the first time patentability of
a computer software-related invention, thereby
leading to the change from “whether or not togrant a patent” to “how to grant a patent”
regarding computer software-related inventionsin the U.S. and paving the way for patentability ofcomputer software-related inventions.
Under these circumstances, the USPTO
officially issued the “Examination Guidelines forPatent Applications of Computer Software” in 1981,
which treated computer software patentability
itself in a different way from patentability ofcomputer software-implemented technology andshifted the examination priority from computer
software itself to “computer software-related
inventions,” thereby laying the foundation forpatent protection of computer software.
In the Alappat(*8) and the Lowry(*9) cases, theFederal circuit gave up the “two-step test
process” regarding the computer algorithm,
holding that a software invention as a whole ispatentable if a mathematical algorithm cangenerate any “practical, concrete and tangible
result” or a memory storing a special data
structure.
Therefore, the USPTO issued “Examination
Guidelines for Computer-Related Inventions” inFebruary 1996. The new “Guidelines” clearlystated in its foreword: Computer-related inventions
include computer-implemented inventions andinventions using computer-read media, andcomputer-read media are categorized as products
and fall under patent law protection; the“two-step test process” is no longer required to
be used in a compulsory manner; processes usedin business activities may be treated in the same
way as in the case of other process-related claims,
and this led to the approval of some patentapplications of computer software related tobusiness activities.
In the State Street Bank& Trust Co. case(*10)
in 1998 and the AT&T case in 1999,(*11) the CAFC
held that a software invention related to abusiness process, whether it is a machine or aprocess, is patentable so long as it can generate
any “practical, concrete and tangible result” as awhole.
It may be said that judicial precedents in the
U.S. have already confirmed that “businessprocess” software is a target of patent protection
and is patentable; and in the course of examining
novelty, non-obviousness and utility of a patentapplication, “useful art,” one of the legal
requirements for patent protection, has beenchanged to “practical utility.” That is, theexamination standard for software inventions has
been considerably relaxed in the U.S.

(*5) Reporter of the president’s commission on the patent system (1966)(*6) Robert Patrick Merges, John Fitzgerald Duffy: Patent Law and Policy Cases and Materials, LexisNexis,2002,P132.
(*7) Diamond v. Diehr, 450U.S.175(1981)(*8) In re Alappat, 33F.3d 1526, 31USPQ2d 1545 (Fed.Cir.1994)(in banc)(*9) In re Alappat, 33F.3d 1526, 31USPQ2d 1545 (Fed.Cir.1994)(in banc)(*10) State Street Bank & Trust Co.
(*11) AT&T Corp. v. Excel Communication Inc.50 USPQ2d 144, Fed.Cir.1999● 133 ●IIP Bulletin 2006

Ⅲ Comparisons of legislation on
patentability of software-related
inventionandexamination
standards
Currently, patent legislation varies in the
U.S., Japan and Europe. Article 101 of the U.S.
Patent Law classifies only the patentable subject
matter and does not clearly refuse to provide
patent protection for computer software-related
inventions; Japan’s Patent Law, which wasamended in 2002, clearly stipulates that computer
software can be granted a patent as a product; but
the European Patent Convention can beconsidered to have explicitly refused to provide
patent protection for computer software itself.
The European Commission’s effort to unify
patent protection of computer software within its
member countries proved to be a failure as aresult of the vote by the European Union
Parliament in July 2005.
In the current stage, software inventions
which the trilateral patent offices deem eligible
for patent protection are as follows: In the U.S.
and Japan, new computers consisting of programplus working process, of program plus device orof program plus a publicly known computer,software products, and business process
inventions; in Europe, new computers consistingof program plus working process, of program plus
device or of program plus a publicly known
computer, software products, and device
inventions which contain business processes.
Software inventions which the trilateral
patent offices deem not to be protected by thepatent law are as follows: In the U.S., mathematicalformulae, mathematical algorithms and computer
software which represents only abstract ideas
without any utility; in Japan, solutions using thenatural law which are merely a program enabling
the computer to process data or a program storingdata on the computer-read storage media; inEurope, computer software itself which can notgenerate any “further technical effect.”To summarize the three examination
standards, one could say as follows: The U.S.
adopts the standard of “practical, concrete anduseful result,” Japan adopts the standard of“application of natural law” and Europe adheresto the standard of “technical effect.”
In general, Japan can be said to have adopted
a stance which closely follows the U.S. as far as
patent protection of software is concerned, while
Europe is more cautious and it was not until 1999
that the examination standard was opened and

IIP Bulletin 2006

software products were allowed to be protectedby patent; compared to the U.S. and Japan, an
additional step is required for the examination ofsoftware patent, that is, the software patentapplication in Europe should have a technicaleffect. Moreover, regarding patent protection ofbusiness process software, Europe still has
certain reservations and approves patent
protection only for devices which contain abusiness process.

Ⅳ Substantial requirement for patentof software-related invention:
Ultimate goalkeeper of thepatent system
1Creativity: Ultimate goalkeeper of thesoftware patent system

The purpose of the patent system is toencourage technology innovation, and theexamination standard of creativity directly
assesses the degree of innovativeness; the basic
aim is to distinguish between inventions so as toprovide patent protection for those which havemade actual important progress, prevent ordinary
technologies from being patented and prevent
abuse of patent. How high the standard ofcreativity is has a direct impact on the role playedby the patent system in social progress.
One of the important reasons why many
people oppose software patent nowadays is that,in their opinion, those patented software
inventions have been granted a patent merely for
luck: They are either so obvious or so simple thatthe possibility of profitability arising from thepatent is totally disproportional to the investment
made for the generation of the invention.
The substantial requirement for patentmeans the degree of sophistication and functions
which an invention has and it covers the technicalnature of the invention. The internationallyaccepted substantial requirement for patent
includes novelty, creativity and utility.
The first element, the standard of novelty, isrelatively objective, and the key to the issue liesin the retrieval of software information and thebuilding of a related database. And regarding thestandard of utility, the last element, we should saythat for a software invention patent, this has
already been solved at the stage of the patentablesubject matter; in other words, a software-related
invention already satisfies the requirement ofutility if it passes the examination of patentablesubject matter.

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Consequently, the key to the substantial
requirement for the patent of a software invention
lies only in the requirement of creativity and thisis just the most difficult threshold that aninvention must surmount in order to be patented,
a standard for which it is the most difficult tomake an absolutely objective assessment.
Because of this, some scholars refer to it as“ultimate goalkeeper of the patent system.”(*12) It
is in the field of computer software inventions(including business processes) that this “ultimate
goalkeeper” plays an even more important role.
2

Comparison of creativity examinationsof software patent

The trilateral patent offices of the U.S.,
Europe and Japan currently adopt different
standards of creativity regarding software patents,
and the requirement of creativity can be divided
into the following three cases in general:
Regarding computer software for the
non-functional descriptive material, the patentoffices in the U.S., Japan and Europe do not grant
patents to those applications without any
creativity, either as a whole physical entity or as
the non-functional descriptive material itself.
Regarding applications in which creativity isshown only in the non-functional descriptive
material, only the U.S. recognizes that they have
non-obviousness required by the patent law.
Regarding patent applications of computerrelated inventions whose entire solution has
creativity, the patent offices in the U.S., Japan andEurope all hold that they have creativity,
regardless of whether or not their non-functionaldescriptive material itself is non-obvious.
In addition, regarding the examination ofcreativity, the standpoint differs between Japanand Europe. While Japan pays more attention to
how the technical solution contributes tocreativity, Europe stresses to what extent thesolution generates the technical effect if
compared to existing technology.

Ⅴ Current state and future ofprotection of computer softwarerelated inventions in China
1

Regulations of the patentable subject
matter under China’s Patent Law
China’s existing Patent Law went into force

on April 1, 1985 and was amended in 1992 and2000. According to Article 2 of the existing Patent
Law, the object of a patent should be “invention
and creation” which includes inventions, utility
models and industrial designs. Rule 2 of the
Implementing Regulations of the Patent Law of
the People's Republic of China interprets theabove three types of inventions in the following
way: “ ‘Invention’ in the Patent Law means any
new technical solution relating to a product, a
process or improvement thereof.”
From the viewpoint of technology legislation,
China’s Patent Law and its Implementing
Regulations do not directly define the scope of
patentable subject matter but in contrast
stipulates in Article 25 of the Patent Law thatthe scope of subject matter of non-patentability
includes the following five cases: scientificdiscoveries, rules and methods concerning
intelligent activities, methods to diagnose andcure diseases, varieties of animals and plants, andsubstances obtained by using the method of
nuclear transformation.
According to the current legal system ofcomputer software protection, obviously copyrighttreats software as one of the objects of protection,
but from a legal viewpoint, China’s Patent Law
and its Implementing Regulations do not exclude
computer program-related inventions from thescope of patentable subject matter.
2

Chinese Patent Office’s patentability
examination of computer softwarerelated inventions

The Chinese Patent Office considers thepatentability of a computer software-related
invention, first of all, from the following two
judgments:
First, it should be determined whether or not
the software invention is a subject matterexcluded from the scope of protection under the
Patent Law. According to the provisions of theexamination guideline, the computer program
itself and the computer program itself recordedon the carrier fall under the rules and methods
concerning intelligent activities which are notpatentable under the Patent Law.
Second, it should be determined whether or
not the invention falls under the category of legal
invention. Regarding this stipulation, if we input a
program into a computer and consider softwareand hardware as a whole entity, then it should not(*12) Adelman, Martin J. et al. Patent Law: Cases and Materials (Minnesota: West Publishing Co., 1998).
● 135 ●IIP Bulletin 2006

be deemed that this invention is not patentable
merely because it contains a computer program,provided that the subject matter of the patentapplication of this invention can generate thetechnical effect and constitute a complete
technical solution.(*13)
According to the above requirements,
regarding whether an invention containing
computer programs is patentable, the examination
should be conducted in the following four aspects:(1) Whether or not integrity was taken into
consideration. This means the combination ofsoftware and hardware, with the emphasis laid on
the input of software to the computer.
(2) Whether the invention can generate thetechnical effect. Neither the Patent Law nor theexamination guideline has clearly defined theconnotation of the “technical” effect, but theexamination guideline makes explanations byciting examples: The technical effect should be aneffect of improvement, a positive and useful effect.
This useful effect originates from the technicalfeatures that constitute the invention or should
be a logical result naturally generated from thesaid technology.(*14)(3) Whether it is a technical solution. Neither
the Patent Law nor its Implementing Regulations
have defined the connotation of the technicalsolution, but from the two expressions
concerning the technical solution, we can find two
key factors which constitute the technicalsolution, i.e., it must solve a technical problem
and have technical features. If it is not a technicalsolution, the application should be rejectedaccording to the Implementing Regulations of the
Patent Law of the People's Republic of China
Rules of Patent Law.
(4) Whether the technical solution is complete.
In order to determine whether the solution is acomplete technical solution, it must be examined
whether the necessary technical featuresdescribed in the independent claim are
sufficient.(*15) And the necessary technicalfeatures mean those that are indispensable for thefulfillment of the aim and effect, with their sum
sufficient to constitute the subject matter of theinvention and make the solution be different fromothers.(*16) The independent claim should reflect

the technical solution of the invention in wholeand describe the technical features which areneeded to fulfill the aim of the invention.(*17) For
an invention containing computer programs, thenecessary technical features described in the
independent claim should include the technicalfeatures of both computer software and hardware.
Secondly, technical content which is needed tounderstand and rediscover must not be lacking inthe specification. Consequently, a technicalsolution is a complete one only after it describes
all the necessary technical features which an
invention has. Applications that fail to satisfy theabove requirements normally should be rejectedaccording to the provisions of Paragraphs 3 and 4,
Article 26 of the Patent Law.
2

Outlook and suggestions(1) Outlook
It is an objective requirement of the Chinese
economy to actively develop the software
industry, and the Chinese government, too, has
attached more importance to it. China has alreadyviewed information technology from a high levelof national strategy and clearly formulated thepolicy to “vigorously develop information
technologies, spur industrialization throughinformation technologies, so as to realize
leap-forward-type development.” This is a correct
choice for simultaneously pushing forward
industrialization and information technology.
Although starting very lately, vigorously
supported by the government andfirmlyunderpinned by the rapid economic development,
China’s information industry, in particular thesoftware industry, has been growing rapidly at an
average rate of approximately 25% each year.
Nowadays, the number of telecommunication
users in China has reached 600 million, thenumber of Internet users has reached 90 million,
and the output value of electronic and information
products amounts to 233 billion U.S. dollars,
occupying the first, second and third places in theworld respectively. Among them, the software
industry has become an industry that has an
initial scale and is full of vitality, and a number ofpromising local software companies haveemerged. Nowadays, China’s software sales(*13) Foreword of Chapter 9, Section 2 of Examination Guideline(*14) Paragraph 2.2.6 of Chapter 8, Section 2 of Examination Guideline(*15) Paragraph 4.4.1 of Chapter 8, Section 2 of Examination Guideline(*16) Paragraph 3.1.2 of Chapter 8, Section 2 of Examination Guideline(*17) Chapter II, Rule 21 of Implementing Regulations of the Patent Law of the People's Republic of China

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revenue accounts for approximately 10% of thetotal revenue of the information industry.(*18)
It is undeniable that compared to thoseeconomically and technologically advanced
countries and regions, China is still lagging
considerably behind insofar as computer and its
software technologies are concerned, but thisdoes not constitute a reason for us not to pay
more attention to the establishment andimprovement of the patent protection system.
Regarding this issue, Mr. Tian Lipu, current
Director of the Chinese Patent Office, pointed out
conclusively: “In my opinion, the mostfundamental impetus of intellectual property
protection, or such demand, arises from theinside of our country.”(*19)(2) SuggestionsFirstly, whether in the judicial judgment or in
the administrative examination, the intrinsic
qualities of an invention should be treated as thecore ground and it should be made clear that likeother inventions, software inventions, too, fallunder the patentable subject matter so long as
they satisfy the legal requirements.
No matter how the form of software changes,
the core ground for software patentability
remains to be the connotation of “invention.” The
connotation of invention determines the scope ofthe subject matter of patent protection as
stipulated by the patent system. It is very
important to make this clear for understanding
the intrinsic qualities of an invention.
Secondly, the examination guideline should
be revised and the standard regarding patentabilityof computer software-related inventions should
be relaxed.
The part of “Examination of Patent
Applications of Inventions Containing Computer
Programs” in the patent examination guideline
should be revised according to the actual
conditions in China. Specifically:(i) It is necessary to enhance protection ofsoftware products and shorten the gap withinternational trends. From the theoretical andpractical developments in the U.S. Europe andJapan it is known that their examination standards
have continued to make progress along with thedevelopment of times, from “process patent” and“device patent” to “software patent,” and further
to current “e-commerce patent,” though ofcourse the standards are not completely the sameamong the trilateral parties. It is known from theconclusion of the above comparisons thatcurrently, at least the trilateral parties havereached a consensus about patentability ofcomputer software products. This is of vital
importance in dealing with those patentapplications in which software (e.g., computer
software plus publicly known computer) alone
contributed to the invention.
(ii) It is necessary to define more clearly the
connotations of terms like “technical solution”
and “technical effect” so that the examination
guideline can be further standardized. In theexamination guideline, “technical solution” wasdefined twice: one is for the purpose of
preliminary examination of utility models, defined
as a set of technical features of employing naturallaws which the patent applicant used for thetechnical problems he/she intended to solve;(*20)
the other is for the purpose of compiling thespecification, defined as the combination of thetechnical means which the applicant used for thetechnical problems he intended to solve. The
technical means are normally expressed throughthe technical features.(*21)
The two definitions differ from each other inthe expression and should be unified at the timeof revision. In this author’s opinion, according to
the experiences of the U.S. and Europe and basedon the relevant provisions in the TRIPs
agreement, it would be better to define thetechnical solution as practical application in thetechnical field. A computer program by means ofcertain carriers should be patentable if its
intrinsic qualities cover no more than businessprocesses that can enhance managerial andeconomic efficiency. As a result of the above
comparisons and analysis, this author holds thatthe answer should be negative.
(iii) It is necessary to draw on the relevant
provisions in the USPTO’s examination
guidelines and make it clear that the standard
used to determine patentability of inventions
which do not fall under the subject matter of legal
protection should be included.
Thirdly, in the judicial judgment it is(*18) Zhou Kouren: Development of Software Industry Should Aim at Initiative and Innovation and Pay More Attention toServices, 2005-12-1 22:28:15, Xinhua Website/ KMCenter(*19) Tian Liu: Autonomy and Innovation, and Intellectual Property, http://www.kmcenter.org/ArticleShow.asp?ArticleID=2624(*20) Paragraph 5.1.4 of Chapter 2, Section 1 of Examination Guideline(*21) Paragraph 2.2.5 of Chapter 2, Section 2 of Examination Guideline● 137 ●IIP Bulletin 2006

necessary to distinguish between patentability
and the requirements for granting patents
regarding computer program-related inventions.
Fourthly, in view of the characteristics ofcomputer software under the environment of theInternet, it is necessary to ascertain the act ofworking of a patent of the computer program
invention.
Japan’s Patent Law revised in 2002 clearly
defines the act of providing computer software
programs as an act of working of a patent. This is
a provision with great significance in response to
the feature of transmitting and using computer
programs in the era of networks and for timely
and effective protection of computer programsfrom patent infringement.

Ⅵ Current recognition and issues
to be tackled in the future
1

Current recognition(1) Software falls under intangible assets andpatentability of software invention is not different
from that of other inventions.
(2) There should be no difference in patentability
between a software product and other products.
(3) The technical nature is a principle to which
any invention patent should firmly conform, andthe difference in the target of action is theintrinsic difference between an invention and a(*22)
work (and trademark).
(4) Business process software which satisfies thedefinition of invention and the substantial
requirements is not different from other software
inventions from the viewpoint of patentability;
hence there is no necessity to treat it differently
as far as patent applications and examinations areconcerned. There is no necessity to purposely set
conditions like “mathematical algorithms are
excluded” or “business processes are excluded.”(5) The key to the examination of substantial
requirements regarding software inventions lies
in its creativity, i.e., whether it has made creative
contributions to existing technologies.
2

patented invention between a mathematicalalgorithm and a computer program algorithm?
(2) Regarding business processes which fail tosatisfy the conventional requirements forinventions, is it possible to establish a protection
system similar to the case of industrial designs?
(3) In view of the feature of patentability ofcomputer software, is it possible to combine
patentability of computer software and utility
referred to in its substantial requirements into
one subject matter? Or in other words, is it nolonger necessary to examine utility regarding
computer software with patentability?
(4) Novelty is the precondition of creativity, but
is it possible for creativity to cover novelty?
(5) Further to Questions 3 and 4 above, regarding
the examination of patent applications ofcomputer software, is it possible to establish a
new system of “two-step examination,” i.e., thefirst step is to examine the patentable subject
matter, including utility, and the second to
examine creativity, including novelty?
(6) What is the impact of the phenomenon of
open-source codes on the software patent
system?
(7) In view of the feature of computer program
reproducibility, is it possible to further determine
the reproduction of a computer program as an actof working of a patent?

Issues to be tackled in the future(1) Is there any difference in the sense of a(*22) The target of action of intellectual property means the carrier of the utility value of the object of intellectual
property. For instance, the object of copyright is a work (referred to as copyrighted work in Japan) and the target of
its action is a person who reads and appreciates the work, namely, the carrier of the utility value of the work is aperson.

IIP Bulletin 2006

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