SOFTWARE PATENTS
There are various challenges associated with the protection of intangible software-related inventions. Equipped with knowledge gained from numerous cases that have since succeeded and failed at the JPO, Japanese patent attorneys can now draft specifications and claims to avoid rejection. This phenomenon can be seen in the rising grant rate of business method– related patents. In view of these trends, it is advantageous to understand the intricacies of the Japanese patent practice.
Subject matter eligibility
Te Japanese Patent Act defines an invention as a “highly advanced creation of
technical ideas
utilising the laws of nature”. Unlike hardware- related inventions, there is no direct link between soſtware-related inventions
nature. Te requisite use of the laws of nature is
www.worldipreview.com and the laws of
met when “information processing by soſtware is concretely realised using hardware resources”. Te JPO further clarifies that “information processing soſtware is concretely realised by using hardware resources” when the soſtware and hardware resources are working together so as to realise arithmetic operations or manipulations of information. Terefore, soſtware can be patentable if the information processing by the soſtware is concretely realised using hardware.
Te information-processing device and operational method which work in concert with that soſtware, and the computer-readable storage medium on which the soſtware is recorded, are also patentable as soſtware-related inventions. Te key here is to ensure that the description of soſtware-related inventions conveys the soſtware and hardware resources “working in concert”. Tis allows claims to be amended in the future
to show that the soſtware works together with the hardware, which is essential for responding to rejections for non-statutory subject matter.
In addition to the requisite cooperation between soſtware and hardware, the Japanese Patent Act also requires that all patentable inventions be “industrially applicable”. Inventions that may have market or commercial potential can be patentable. In contrast, inventions where practical application is impossible, even if the invention is theoretically operable, are not patentable.
Description requirements
As mentioned earlier, proper attention should be paid in draſting the specifications of soſtware- related inventions to ensure that the description includes a specific or concrete means to carry out the invention. Te Japanese Patent Act requires that the invention for which a patent is sought be
World Intellectual Property Review September/October 2012 75
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