13 February 2010

Guidelines for Examining CII in Japan

I just came across an English translation of the “Examination Guidelines for Inventions in Special Fields: Computer Software-Related Inventions” of the Japanese Patent Office (JPO). The most interesting part of the Guidelines appears to be Chapter 2 concerning the requirements for patentability:

The basic concept of examining statutory subject-matter is that a software-related invention must constitute “a creation of technical ideas utilizing a law of nature”. It does so if the software-driven information processing is concretely realized by using hardware resources. That is, a claimed software program must render a general-purpose computer suitable for a particular purpose by concretely identifying means or components that conduct data processing steps by which the intended purpose is realised, based on cooperatively operating software and hardware resources.

A (software-related) method for operating an information processing apparatus that is particularly suitable for an intended purpose is thus patentable, if the required information processing is concretely realized by using hardware resources. The relatively vague "laws-of-nature requirement" is thus fulfilled if the claim concretely defines those hardware resources that are utilised by the program to be protected to achieve the purpose.This definitions, however, have to clearly state the impact of the software elements on the hardware elements to obtain the wanted results.

According to this definition, even a business method represents statutory subject-matter if it is claimed as a software-related process being "concretely realized by using hardware resources" such that "technical ideas are created by utilizing a law of nature", as analysed here by the Japanese Patent Attorneys Association (JPAA).

Utilizing law of nature: This requirement sounds familiar to German ears, since it has also been set up as a requirement for patentable software programs by the German Court of Justice (Bundesgerichtshof, BGH) in 1976 in its much discussed and much cited decision “Dispositionsprogramm” in which it was declared that “a teaching for methodically acting by utilizing controllable laws of nature in order to achieve a causally understandable success has technical character”.

As could be learned from the Amicus Cuiae Brief of the Polish Patent Office regarding EPO case G3/08 before the Enlarged Board of Appeal, this ancient German definition of technical character has still also followers: 

“No program (software solution giving only the new functionality to the old hardware) can be an invention, irrespective of the form or circumstances in which the program was presented. […] This comes from the general principle of the rule of law. Here the judgement of the German Supreme Court (BGH) in the case Dispositionprogramm is of particular importance, because it directly and profoundly refers to the computer program as early as in the year of 1976."
Utilizing a law of nature is not required for statutory subject-matter according to the US and European patent practice. While US patent practice requires a new and useful process, machine, manufacture, or composition of matter, the European patent practice requires a further technical effect going beyond the normal physical interaction between a software and a computer, as declared in the EPO Board of Appeal's decision T 1173/97 (Computer program product/IBM) and as also reffered to in the second question 2b of Alison Brimelow's referral to the EPO Enlarged Board of Appeal (G3/08).

Admissible claim categories: Software-related invention may be claimed in Japan by an number of different categories:
  1. a process in whose course a sequence of operations is performed over time;
  2. a product specified by multiple functions conducted by a computer;
  3. a program which makes a computer (i.) executing a process (cf. item 1) or (ii.) operating as a means (cf. item 2);  
  4. a computer-readable storage medium storing a program that makes a computer execute a process or operate as a means (cf. item 3).
It is explicitly stated in the Examination Guidelines, that the judgement whether or not statutory subject-matter is claimed should be directed to the “significance of the matters” (i.e. the basic idea of the claim), independent on the actually chosen claim category.

Examples: The claim “computer comprising an input means to input document data, a processing means to process the inputted document data and an output means to output the processed document data, wherein the said computer prepares a summary of the inputted document by using the said processing means” defines a flow of information for transforming document data into a summary. However, this claim does not realise the intended purpose based on cooperatively operating software and hardware resources, since the “processing means” (which I suspect to be a software element) does not cooperate with a hardware element in order to prepare the summary.

Apparently, the above claim wording is too abstract to ever represent statutory subject-matter. The claim in fact merely states the intended result. As far as I understand the Japanese requirements, however, even transforming a text into its summary may be regarded as statutory subject-matter, if the claim specifies features (if possible) that define more detailed processing steps conducted by the “processing means” in cooperation with concrete hardware elements (e.g. CPU, memory, registers, or the like). If such more concrete technical teaching would also involve an inventive step is a different question.

In the same way, the claim “computer to calculate the minimum value of y=f(x) in the range of a≦x≦b” merely defines an intended result of a mathematical operation but does not define on a technical level, how this result is achieved by using hardware resources. In the terminology of the Japanese Guidelines, this claim does not specify cooperative operation of software and hardware either.

On the other hand, clear “creations of technical ideas utilizing a law of nature” would be e.g.
  • control of an apparatus (rice cooker, washing machine, engine, hard disk drive, etc.), or processing with respect to the control; or
  • information processing based on the physical or technical properties of an object (rotation rate of engine, rolling temperature, etc.).
In both cases the scope goes beyond the pure execution of a software program (i.e. the normal physical interaction between a software and a computer) in that an apparatus is controlled or object properties are measured. This, however, would be perfectly in line with the “further technical effect” as required by the EPO  Boards of Appeal in T 1173/97 (Computer program product/IBM).

Conclusion. The Japanese way to examine patentability of software-related invention appears to be more liberal that the Europrean (and German) way, since it is sufficient in Japan to state in a claim how exactly software elements interact or cooperate with hardware elements to achieve a result, which should be possible in most cases which do not exclusively relate to pure mathematical operations.The crucial examination step will then be to check whether or not the claimed cooperation between software and hardware elements is novel and inventive.