Comparing eligibility in the US and Japan


James L Korenchann, Michael D Anderson and Yukio Oishi

Comparing eligibility in the US and Japan

Anson /

Business method and software claim patents are often seen unfavourably in the US, but it’s a different story in Japan. James Korenchan and Michael Anderson of McDonnell Boehnen Hulbert & Berghoff and Yukio Oishi of TMI Associates outline the importance of understanding where the Japanese Patent Office stands on subject matter eligibility.

Patent practitioners in the high-tech sector have most likely encountered Japanese patent law in one form or another. Their clients or their clients’ competitors will likely make, use, and sell products in Japan, making the country an attractive place for obtaining patent protection.

Although Japan is viewed as having a very pro-patent court system, many US practitioners have a limited understanding of Japanese patent law, particularly in the area of subject matter eligibility of high-tech inventions.

US practitioners are all too familiar with the two-part Alice test for determining the patent eligibility of claims under section 101.

McDonnell Boehnen Hulbert & Berghoff, TMI Associates, JPO, subject matter eligibility, patent practitioners, inventions, Alice, USPTO, software, CRM