Comparing eligibility in the US and Japan
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.
The US Patent and Trademark Office (USPTO) and the courts have wrestled for years over how to guide examination of claims under section 101.
The courts have provided different interpretations as to what constitutes an abstract idea and what elevates a claim to have “significantly more” than this. The USPTO typically then follows suit by periodically updating its subject matter eligibility guidance. However, the manner in which examiners apply the case law and the USPTO guidance can be mixed.
In early 2019, the USPTO attempted to clarify part two of the Alice test—the guidance is based on recent US Court of Appeals for the Federal Circuit decisions and clarifies what constitutes “significantly more”, stating that “a claim is not ‘directed to’ a judicial exception if the judicial exception is integrated into a practical application of that exception”.
The new guidance is a powerful tool for patent practitioners and obviates previously opaque requirements. Now, a claim (even one with conventional elements) can still be patent-eligible as long as it integrates a judicial exception into a practical application.
While the new guidance attempts to bring some clarity and consistency to patent eligibility, the interplay between the courts and the patent office remains uncertain.
In Japan, the bar for patent eligibility appears to be lower and more clearly defined. For example, an examiner must determine whether a claimed invention as a whole involves the “creation of a technical idea utilising the laws of nature”.
But, similar to the situation in the US, examples of inventions typically deemed patent-ineligible under this Japanese standard include those that are directed to economic laws, rules for playing a game, mental activities, mathematical formulas, or the mere presentation of information (eg, image data taken with a digital camera).
Software inventions
When claims are deemed “software-related”, the determination takes a slightly different form and involves a two-part enquiry.
First, the examiner evaluates the claimed invention from a non-software focused standpoint and determines whether the invention stands on its own and is patent-eligible, notwithstanding any software aspect the invention might include.
If the examiner is unable to make this first determination, the examiner then evaluates the invention with a heavier emphasis on the software aspects of the claim.
