日本語
Patent System Q&A
Opening up a world of opportunity
1. "INVENTIONS" AND THE PATENT SYSTEM IN JAPAN
- Utilize recognised laws of nature (i.e., not the laws themselves or simple intellectual activities or methods, etc)
- Be a technical idea. That is, (a) address a technical problem, (b) provide a technical means for solving the problem, (c) detail technical operation and effect and allow replication and enablement by skilled persons in the relevant art.
- Be a creation. That is, not the mere discovery of a law, etc. that already existed, but active creation through intellectual endeavour.
- Be highly advanced. This distinguishes inventions from utility models (another type of intellectual property in Japan) which protects a technical feature that is not highly advanced. Utility models only cover physical devices whereas, patents include methods and processes as well as certain pharmaceuticals and chemical substances. Utility models are also quicker and easier to register than patents. However, patents are protected for 20 years (10 years for utility models) and are more enforceable against infringers.
What does Japanese patent law cover?
The purpose of Japanese patent law is “promoting the protection and the utilization of inventions, to encourage inventions, and thereby to contribute to the development of industry” (Japanese Patent Act, Article 1) The patent system does this by granting an inventor monopoly rights to use their invention for a certain period of time (generally 20 years) and, at the same time, by encouraging technological innovation and industrial development by providing third parties with opportunities to use the published invention.
In order to qualify for these monopoly rights, Japanese patent law states that an invention must be “the highly advanced creation of technical ideas utilizing the laws of nature” (Japanese Patent Act, Article 2 (1)). Breaking down this definition into its parts, a patentable invention must:
The following sections in 1. "INVENTIONS" AND THE PATENT SYSTEM IN JAPAN provide more details on the scope of inventions covered according to the Japanese patent law.
What are patentable inventions in Japan?
For an invention to be patentable in Japan, it should:
a) be a "statutory" invention,
that is a "highly advanced creation of technical ideas utilizing the laws of nature." (Art.2(1)).
Japanese patent guidelines further define non-statutory inventions as those which are (i) a law of nature as such, (ii) mere discoveries and not creations, (iii) those contrary to a law of nature, (iv) those in which a law of nature is not utilized, (v) those not regarded as technical ideas, and/or (vi) those for which it is clearly impossible to solve the problem to be solved by any means presented in a claim.
In other words, the simple discovery of a law of nature; any theorems, axioms, game rules, computer programs, business methods which are not bound by the laws of nature; and any technically learnable skill (e.g., the Ali shuffle), etc are not considered statutory “inventions”. The invention should also be a “creation” rather than a mere discovery that was waiting for humans to come along.
Note: “Highly advanced” in the above definition serves to delineate between inventions in patents and more basic utility models.
(See also 1.5 Software Inventions and 1.6 Business Methods on the patentability of software and business methods.)
b) be industrially applicable (Art. 29(1)(main paragraph)),
thus, inventions utilized only in a personal/experimental sense, such as medical treatment by surgery or diagnosis of a human by a human are not considered applicable, (see also 1.3 Industrial Applicability and 1.7 Medical Inventions);
c) be novel over the prior art (Art. 29(1)),
that is, inventions that were not publicly known or described in a publication distributed within Japan and/or elsewhere overseas prior to filing (this often means identical to a previous invention);
d) have inventive step over the prior art (Art. 29(2)),
that is, inventions which could not easily have been made by persons of ordinary skill in the art to which the invention pertains (this often means envisaged and achieved by combining two or more previously known inventions);
e) be clearly understandable and operable by persons of ordinary skill in the relevant art (Art. 36); and
f) if including two or more inventions, comply with Japanese unity of invention requirements,
see (4.5 Unity of Invention Rejections & Special Technical Features).
What are "industrially applicable" inventions?
The JPO examination guidelines list the following as industrially inapplicable inventions, that will be rejected as unpatentable.
(i) Inventions of methods of surgery, therapy, or diagnosis of humans
(ii) Commercially inapplicable inventions
(iii) Obviously impracticable inventions
Methods of surgery, therapy, or diagnosis of humans refers to medical activity normally practiced or directed by medical doctors.
Commercially inapplicable inventions are inventions applied only for personal use or academic or experimental purposes.
Obviously impracticable inventions refers to ludicrous inventions that might work in theory but have no practical application.
Differences with US
One clear difference is that medical treatment methods are normally patentable in the U.S as simply by being “useful” (since an invention can be “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”). Such applications may not be allowed in Japan.
See the requirements for medical inventions below (1.7 Medical Inventions).
For more on the details of industrially applicability, see the JPO’s English explanation at:
Could you provide more details about novelty and inventive step in Japan?
Generally, the requiremens for novelty and inventive step in Japan are stricter than in the US, for example. There are cases when an application is rejected in Japan that has been allowed in a number of other countries. The Japanese examiner may also cite Japanese language publications as prior art which are not available in English. It should also be noted that Japanese examinations are carried out independently of decisions in other jurisdictions. If an application is allowed elsewhere, say the US or Europe, this does not mean the application will necessarily also be allowed in Japan.
Novelty
The law requires that a claimed invention loses novelty when the invention is already publicly-known or publicly-worked before the date of filing the application; and/or has already been published electronically in a document distributed in Japan before filing (so that it can be utilized.)
Inventive Step
The law states that a claimed invention does not provide an inventive step when skilled persons in the art relating to the invention could have made the invention before the application was filed, on the basis of previously publicly disclosed invention(s) - e.g., by combining two previous inventions, or due to the difference (step) from a previous invention being obvious.
For more on the requirements of novelty and inventive step, see the JPO's explanation via the following pdf documents:
Can software be patented in Japan?
Yes, but they first have to meet the basic statutory invention requirement in Japan of being a "creation of technical ideas utilizing the laws of nature" (see 1.2 Patentable Inventions). This "creation of technical ideas" utilizing the "laws of nature" condition is met when the software (or program, etc.) is deemed as "cooperatively working" with a hardware resource towards a beneficial goal. In other words, a software patent application will be eligible if the claims and specification are expressed such that information processing by the software is "concretely realized by using hardware resources" such as a CPU, memory, input device, output device or physical device. (Examination Guidelines for Patent and Utility in Japan, Part III, Chapter I “Patentability”).
Once this patent-eligibility requirement is met (i.e., the realization of the software by using hardware resources is demonstrated), the invention will potentially be patentable if the solution to the problem being solved is non-obvious (i.e., there is an inventive step) regardless of whether the hardware realizing this is itself well-known.
Software-related Patent Claim Construction
Given the invention eligibility requirements expressed above, software-related patent claims need to be expressed in terms of either a product or processes. In other words, stand-alone programs, programming languages and program listings will be rejected unless they can be explicitly shown to be product inventions utilizing the laws of nature.
According to the JPO guidelines, the invention of a process (including the invention of a process of manufacturing a product) should specify a sequence of processes or operations connected in time series, i.e., a procedure, and the invention of a product should specify a combination of multiple interrelated functions performed by the invention.
In terms of practical claim construction, claims are usually required to explicitly state the relationship between hardware and software, and also by specifically mentioning the hardware involved. It is not sufficient that some physical component for realizing the information processing of the software is referred to in the specification.
Thus, the following wording in the preamble is a typical example of acceptable claim language: "A computer-readable storage medium having a program (or data) recorded thereon..." The entire claim may therefore look something like this: "A computer-readable storage medium having a program recorded therein; where the program makes the computer execute procedure A, procedure B, procedure C (or realize function A, function B, function C….)"
If a program indicates a multiple of functions performed by a computer, it can also be classed as a product invention. Example: "A program which makes a computer execute procedure A, procedure B, procedure C (or realize function A, function B, function C….)"
Are business methods patentable in Japan?
Japanese patent law does not recognize “business method” patents per se. However, business methods are patentable if they are based on software or a system. The claimed invention should be a “creation of technical ideas utilizing the laws of nature” (see 1.2 Patentable Inventions) and in the case of software, should be “cooperatively working with” and “realized by using” hardware resources such as CPUs etc. (see 1.5 Software Inventions).
With respect to business methods as systems, in Case No. Hei 29 (Gyo-Ee) 10232 (Oct. 2018), the Japanese Intellectual High Court reversed a JPO Appeal Board decision on a “(meat)steak providing method (system)” at a restaurant chain: ruling that the invention was not simply an “economic activity/procedure executed by humans”, but also included apparatus such as labels, seals (stickers) and measuring devices for solving the technical problem of the invention (preventing a steak being given to the wrong customer). The court concluded that the defendants' invention thus constitutes a statutory invention.
What are the patent requirements for medical inventions?
As part of the judgment criteria for industrial applicability, the Japanese law recites that medical practice or treatment on humans by surgery or therapy and methods of such are outside protection. That is, medical methods inventions are not permitted if that are methods of "operating on, treating and/or diagnosing a human" performed by medical doctors etc. (Art. 29(1) Japanese Patent Act).
Since products such as a medical devices or medicines (or combination of both) are not methods of “operating on, treating and/or diagnosing a human”, they are industrially applicable.
Methods for controlling the operation of a medical device also fit the industrial applicable criteria, as long as the function of the medical device itself is represented as a method (and the claimed method is not used on a human). Other methods such as methods of extracting samples and data from the human body, or of analyzing or treating said samples, are also industrially applicable.
Amendment of Medical Treatment Claims to Medical Use Claims
Since the medical use of, or second medical use of a known pharmaceutical composition is also patentable, medical treatment claims in foreign applications, which would not be patentable in Japan, are often transformed/translated into pharmaceutical composition claims, e.g. "The use of known compositions A and B in a drug for treating medical problem C." or "A composition for treating X (second use) comprising a compound Y as an active ingredient."
We were recently asked by a client if method-of-treatment claims (including administering a drug) can be reformatted as "use of" or "for treatment of Y" claims (i.e., Swiss-type or second medical use claims) even though there is not literal description for this format in the application. This is indeed possible. Assuming there is support for the claims as they are written in the disclosure, the Japanese Examiner will consider this as support for a "use of" claim also. (Reformatting to composition claims ("composition comprising X for treatment of Y") is also possible in this way.)
Note that, unlike the U.S., in such use claims, pharmacological data, optimum dosage and an appropriate method of administration must be disclosed in the original specification. A lack of support or enablement rejection will usually result without such data, and data cannot be added subsequently because this would be considered new matter not disclosed at the time of filing.
We also note that there is no equivalent requirement in the U.S. which specifically exclude inventions for treating humans (i.e. inventions belonging to the field of medical treatment or pharmacology) from protection. As long as the inventions are "useful" they are included under protection.