SOFTWARE PATENTS
clearly defined. Rejections from the JPO based on a lack of clarity in the invention can arise from:
• Unclear descriptions of the claim itself;
• Incomprehensible technical meaning of elements defining the invention;
• Technically unrelated elements used in defining the invention;
• Use of expressions where the standard or degree of comparison is unclear; and
• Defining the invention by the intended result to be achieved where nothing tangible is devised.
Additionally, the specifications must satisfy the ‘enablement’ requirement. Te description of the invention within the specification must be sufficiently clear as to enable “a person skilled in the art” to work the claimed invention. A person skilled in the art is deemed to have ordinary creative ability and use of ordinary technical means for performing research and development in the technical field to which the invention pertains. Te original specification should fully disclose the hardware arrangement of the apparatus to which the soſtware is applied, the specific functions of the hardware, and the relationship between soſtware and the hardware.
Te claims must satisfy the support and clarity requirements. Accordingly, in draſting the claims, care must be given to the language used so that the claims properly and clearly recite a method performed by a computer or machine and not by a hypothetical person or administrator. Te claims and the specification must also be written in concert with one another so that the claimed invention is sufficiently supported by the original specification. Again, the claimed features must be sufficiently disclosed in the specification as a step executed by hardware.
Te JPO deems drawings to be supplemental in nature and not required. However, in practice, when prosecuting soſtware-related inventions, drawings should be used to complement the disclosure. Te functional description of the elements of the invention should be coupled with hardware descriptions and supported with flowcharts, diagrams, and outlines. Te latter should explain how the steps are carried out by the soſtware and should be as detailed as possible, including the application of subroutines and modules, data flows, and timing charts when possible. Te inclusion of these details is important to enable one skilled in the art to carry out the soſtware- related invention and to establish a basis for future amendment should any of the claims be
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“GIVEN JAPAN’S PROMINENCE WITHIN THE SOFTWARE INDUSTRY AND THE GLOBAL MARKETPLACE, IT IS PRUDENT FOR COMPANIES TO DEVELOP INTERNATIONAL PATENT PROSECUTION STRATEGIES WITH JAPAN IN MIND.”
rejected for being unclear, or for failing to recite a method performed by hardware.
Inventive step
Only inventions with an inventive step are allowed to be patented. Whether claimed inventions involve an inventive step is determined by whether those inventions could have easily been invented by a person skilled in the art, based on prior art and the state of the art in the field to which the present invention pertains at the time of the filing. Te JPO will examine the claimed invention together with the prior art to assess whether the invention is a simple aggregation of features from prior art and whether the prior art discloses a motivation to arrive at the claimed invention.
In soſtware-related inventions, advantages of the invention that are expected by computerisation are not considered inventive. Tese non-inventive advantages include quicker processing times and processing large amounts of data. Other non-inventive advantages of soſtware-related inventions include combining technologies used in one field and applying them to another field, additions of commonly known means or
replacement by equivalents, soſtware
implementation of functions performed by hardware, and computerisation of existing human transactions. Although helpful, these advantages are usually considered to be within the scope of the ordinary creative activities of a person skilled in the art. Terefore, in cases where there are no technical difficulties or hindrances pertaining to the combination or application of existing technologies, no inventive step is recognised.
Given Japan’s prominence within the soſtware industry and the global marketplace, it is prudent
World Intellectual Property Review September/October 2012
for companies to develop international patent prosecution strategies with Japan in mind. Companies should be aware of the similarities and differences in prosecuting soſtware-related patents in Japan and in their home countries. Tis will enable them to craſt original applications from their home country in anticipation of future international patent prosecution.
Understanding how the JPO interprets specific patent patent
associated with the protection of
requirements is crucial when draſting applications, to avoid the challenges intangible
soſtware-related inventions and in order to tailor applications
appropriately prior to filing, or
entering the national phase in the case of Patent Cooperation Treaty filings, in Japan.
Kenji Sugimura is the president of Sugimura International Patent & Trademark Attorneys. He can be contacted at:
k.sugimura@
sugi.pat.co.jp
Rebecca Chen is the business development manager of Sugimura’s California branch. She can be contacted at:
r.chen@
sugi.pat.co.jp
Kenji Sugimura is an experienced Japanese patent
attorney
and litigator
specialising in mechanics and building engineering. Sugimura is a member of AIPPI, APPA, FICPI, INTA and the JPAA.
Rebecca Chen is a California licensed attorney. She is based in Palo Alto and specialises in comparative IP law. She serves as the liaison between Sugimura’s US clients and the firm’s Tokyo office.
www.worldipreview.com
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