Patent Eligibility And Enforcement For Software And Business Related Inventions In Japan – Patent – Japan – mondaq.com

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Unlike other jurisdictions, an invention is defined as “a creation of a technical idea utilizing laws of nature” under Japanese Patent Law.  From this definition, the following matters are excluded.
CS inventions can be recited using the following categories.
A “computer program” and its equivalent (such as neural network) (as an intangible object) are deemed to be a “product” under Japanese Patent Law, and an act of providing (or offering for provision) a computer program, etc. through the Internet is deemed to be working of patented invention,
Business inventions are examined in the manner of B).
Japanese Patent No. 5,946,491 was registered in June 2016.  However, an Opposition was filed and the JPO eventually revoked the patent despite corrections being made.  The Patentee filed an Appeal against the Decision of Revocation, and the IPHC finally judged that the Decision of the JPO should be cancelled.
Maintained Claim 1 is as follows (the bold portion indicates the correction that was made).
A system for providing steaks, comprising:
guiding a customer to a buffet-style table;
asking the customer about the quantity of steak which the customer wants;
cutting the desired quantity of steak from a block of meat;
grilling the cut meat; and
bringing the grilled meat to the customer's table,
wherein the system comprises:
a label describing a customer's table number,
a scale for weighing the cut meat, and
a mark for distinguishing the cut meat from other customers' meat, and
wherein a sticker on which the quantity of the meat and the table number are printed is output, and the mark is the sticker.
The JPO argued that the essence of the invention is a business method itself and that how to use the objects (label, scale, and sticker) to achieve the purpose is merely recited.  However, the IPHC judged that three of the objects are technical means to solve the problem (“providing a preferable amount of steak at a cheap price”) due to the effect (“distinguishing a customer's meat from that of other customers”) introduced by the objects.
Amongst experts in the field, there was criticism against the IPHC regarding the judgement and support for the JPO's decision, but please be informed that that kind of invention was granted in Japan.
The following points should be considered when determining the patent eligibility of software-related inventions.
As shown in the following chart, Japanese courts used to be very strict for patentees of CS inventions.  This trend may be due to the scope of the claims being interpreted in a narrower manner in the courts, and file wrapper estoppel during the examination was effective.
Success Rate
Period
District Court (all technical fields)
21.7% (102/468)
2004 to 2014 (*1)
IP High Count (all technical fields)
18.1% (37/204)
CS Cases
3.9% (1/51)
2000 to 2017 (*2)
(*1) https://www.kantei.go.jp/jp/singi/titeki2/tyousakai/kensho_hyoka_kikaku/tf_chiizai/dai3/siryou03.pdf
(*2) Lee, et. al (2018)
However, the number of patent infringement litigation cases for business-related inventions has been increasing since 2016 and cases are recently more apt to be ruled as infringing.  It seems that the JPO's interpretation of the scope of such claims has become more neutral.
Generally, patent enforcement in CS inventions is very difficult.  If the claims include internal operations of software, it was difficult for patentees to prove infringement because they cannot obtain the source code.  In addition, Japan does not have a discovery system like in the U.S.  However, the system of On-site Investigation by Experts has been introduced since 2020 by a law revision.  Under this system, the court can designate neutral technical experts and order them to visit the alleged infringer's site in order to collect evidence of the infringement and file a report thereof.  The system may be advantageous for patentees.
Japan has become one of the most pro-patent countries in prosecution in the world in regard to obtaining a broad scope of protection and patent eligibility.  On one hand, the enforcement of patent rights was very difficult, in particular, in the field of CS inventions.
However, the situation has been changing for the better in view of current court judgements, and we are happy if you are interested in filing applications in Japan.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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