発明の特許適格性(成立性) INVENTION ELIGIBILITY OF JAPAN

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INVENTION ELIGIBILITY OF JAPAN (part 1)

2017-07-10 15:05:56 | 知的財産権

   INVENTION  ELIGIBILITY

 

The following monograph relates to invention eligibility in Japanese intellectual property field. Further intellectual property of data is referred.

 

 The monograph is derived, focusing on invention eligibility, from my work (Japanese language) "A consideration on the eligibility of an invention triggered by the intellectual property high court decision on the data structure recording medium" published in the" patent magazine"  issued by the Japanese Patent Attorneys Association(JPAA) (December, 2015) .

For accessing to this my work itself, you can open by clicking this link part.

 

TITLE

Invention Eligibility

 Table of contents
1. Current state of the invention eligibility discussion of each country
  1-1. USA
  1-2. Europe
  1-3. Japan
2. Invention eligibility etc. about each type of target of the invention (idea)
  2-1. Natural phenomenon, natural products
  2-2. Artifacts (including things that change)
  2-3. Mental activity
  2-4. Device for processing/carrying Information
    A. Device that deal with " information on matter" being to be processed by machine
       (1) Information processing device

ex. Computer (information processing device)

ex. Video player, Karaoke playback device
       (2) Information carrier for information processing device

ex. Computer program recording medium

ex. Computer data structure recording medium

ex. Video data recording medium
    B. Device that deal with " information on matter" being to be directly recognized  by human (information carrier for human)

ex. Book, calendar

   ******************************************************

 

Text

1. Current state of discussion by each country on the eligibility of invention

1-1. USA
 Considering the recent US judgements, the State Street Bank judgment, which  widely acknowledged the invention's eligibility (protection eligibility), was restricted by the Bilski judgment and further limited by recent Prometheus judgment and Alice judgment ( 2).

 According to these judgements and the revised edition of the examination provisional guidance of the USPTO submitted later (December 2014), under the US Patent Act Article 101 (invention eligibility), natural law, natural phenomenon, abstract idea (for example , foundation of economic practices, certain ways of planning human activities, ideas themselves, mathematical relationships / formulas) ,themselves do not have invention eligibility.

 Furthermore, it is that ideas including or directed to them are not protected elsewhere, unless they are significantly more than them (inventive concept).

In Prometheus judgment, the reasons to be handled under Article 101 of the law for the issue, are explained as follows. Leaving it to article 102 (novelty) or 103 (obviousness) brings about great uncertainty. That is, articles 102 and 103 are presupposed to contrast with the existing prior art.

 However, in the case of natural phenomena, natural phenomena, and abstract ideas, there are such cases that prior arts cannot be found, and in such cases, there is concern that these articles will not lead to appropriate conclusion (3).

 However, even if it is so, it can be said that there is such a big drawback that the criteria of "significant more"  is very ambiguous. There is a lot of problem in using such concept similar to the inventive step judgement (article 103) without any references.

1-2. Europe
In Article 52 (1),(2), (3) of EPC,

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. 

(2)The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a)discoveries, scientific theories and mathematical methods; 

(b)aesthetic creations; 

(c)schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; 

(d)presentations of information. 

(3)Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

 

Furthermore, in the case where it is not itself, initially it was said that contribution to known prior technology must be technological property in order to be accepted as an invention (4), but it was said that in some trial decisions, novelty- like elements such as comparison with the prior art should not be introduced on the eligibility judgement, and the eligibility requirement was relaxed as such that no further technical contribution is required.

Instead, in principle, examination way for inventive step has changed as only technological features are considered (5).
 Regardless of whether it is intended or not, it seems that the stage is shifted from the invention eligibility requirement to the inventive step requirement, and the above-mentioned concern of the US discussion is avoided in principle by ignoring the non-technical features.

 

However, this European discussion has the drawback that it is hard to understand definitely the meaning of important keywords "technology", "non-technology", "interaction between technology and non-technology".

According to the development of IT technology the definition of technology tends to expand (6), and the boundary between technology and non-technology is blurred. For example, is an encryption device really technology?

The information technique is based on only such rule humans decided (7).
 Also, even if it is limited to inventive step judgment, if it is assumed that it is deemed not to be written despite being apparently described in the scope of claims, it is too violent and in order to treat such extreme dealing, I think that such should not be on a guideline or a trial decision but on a legal basis like the statement of the European Patent Convention. The problem is significant.

 

1-3. Japan
 In Japan, based on Article 2 of the Patent Law, "Invention is highly advanced creation of technical ideas using law of nature", the eligibility requirement of the invention is judged mainly with or without the use of law of nature.

In 1993 (Heisei 1993) revision examination standards, such is described that "even if there is a part that does not use the law of nature in the constitution of the claimed invention, when it is judged that the invention according to the claims as a whole uses the law of nature, it becomes that the invention use the law of nature.
 Whether to use the law of nature as a whole will be judged in consideration of the characteristics of the technology."

Such is succeeded in the existing examination standards (8).

 

2. Determination of the invention eligibility etc. for each type of target of the invention (idea)
 As described above, each way of the United States and Europe has its own difficulties. The reason that the difficulty comes out is that in the United States, despite the heterogeneity of natural phenomena, mental activity, software, etc., it is trying to handle by such uniform judgment that they do not admit eligibility if they do not apply to the extent of "significantly more", and in Europe, regarding applied inventions for such as scientific theory, mathematical method, mental activity, etc., although they are heterogeneous to each other, they are bundled up with non-technology field , and is handled by such a uniform criteria in judgment of inventive step.

 However in Japan, on the other hand, it is said that "to judge by considering the characteristics of the technology" as described above, and there seems to be a direction to avoid uniform judgment (for example, regarding computer / software related invention and biological related inventions, two examination standards are prepared for respective specific technical fields (from October 1, 2015, the standards have moved to the Annex to the Patent / Utility Model Assessment Handbook).

Therefore, I interpreted this "thinking in considering the characteristics of technology" as a way of avoiding uniform judgment, and I studied according to this direction as described below.

 (As a matter of course, there should be not many laws that prescribe invention eligibility  (protection eligibility) ,and it should be not contradictory laws, so in that sense it should be uniform. However when its application, proper interpretation according to each subject can be permitted and it is not to be forced for a uniform interpretation of one pattern.)

  In other words, from the viewpoints of "matter and information", the target of the invention (idea) are classified into several types, the eligibility of the invention is judged for each type, and at the same time, the inventive step and definiteness can be judged (In that case, depending on the type, lowering the hurdle of the invention eligibility than before and covering with inventive step and  definiteness for it).

 By the way, it should be noted that the target of the invention (idea) is obviously this world. Furthermore, "This world is composed of matter, energy and information", says Norbert Wiener, a cybernetics expert (9).

 Therefore, I believe that the target of the invention (idea) can be considered as this matter and energy (including change (hereinafter referred to simply as "matter") (10)) and information (11).

 

 Furthermore, the matter can be classified into natural phenomena and natural products and artifacts (including things that change).

Further, the information can be classified into such information appearing as a mental activity (memory / thought) of a human and such information(hereinafter referred to as " information on matter") existing in one united body on the matter as like a paper (record) or a computer (processing) (hereinafter referred to as " device for processing/carrying Information ") .

 That is, the target of the invention (idea) is : 1. Natural phenomena, natural products, 2. Artifacts (including things that change), 3. Mental activity and 4. Device for processing/carrying Information.

 For each of these four types, the eligibility of the invention, furthermore, inventive step, indefiniteness will be discussed.

Note that these types are independent from "invention categories of products and methods" in the Patent Law.

For example, in the type of artifacts of 2-2., there may exist products category and process (method) category.

 

In addition, although the actual invention is often a combination of several of these four types, as will be described below, it can easily correspond on the extension of the below consideration about the four types.
 Because it is inherently impossible and should not take up only a part of the claim on the stage of the eligibility judgement and therefore if it is attempted to deal with the inventions of those combinations on the invention eligibility, (since it is a judgment as to whether or not the whole claim falls under the legal definition of the invention), the magic word such as "as a whole" will appear.

Further, in the United States, there is no choice but to make such a judgment that is similar to inventive step judgment, without any citations.

On the other hand, if we judge with the indefiniteness criteria or the inventive step criteria as below in this paper, when there is an indefinite part in a part of the claim, the whole claim becomes unclear. And the inventive step criteria has inherently various logics so as to handle the combination of invention, it is easy to deal with even a combination of invention on the inventive step.


2-1. Natural phenomenon, natural products
 In Japan, the United States and Europe, natural phenomena (natural law), natural products themselves do not have invention eligibility and this is common and reasonable.

However, with regard to the application of the natural phenomenon, natural products, they are different.

 In the United States, invention eligibility (Article 101) is denied because it lacks inventive concept unless additional features that certainly embody the application of natural phenomena and natural products, are not described (12). However, it is unclear as to what "additional features to be embodied reliably" is.

 In Europe, in the examination of the EP application corresponding to the patent application of the Prometheus decision, the contents are taken up without judgment for technology and non-technology, and it is regarded as having no inventive step because of known theory of routine work (13).

 In Japan, as apparent from "colored carp breeding case" of the Tokyo High Court ruling, if the applying is simple but the discovery is difficult to conceive, it is considered reasonable to acknowledge the inventive step (14). Behind the revolutionary discoveries there is usually huge investment and is in line with the objective of the patent system (encouragement of invention) (15).

 

2-2. Artifacts (including things that change)
 It is a matter created by a human, it is an orthodox invention, and the eligibility of the invention can be affirmed.

 However, as stated 2-2 in the recent US theory, there are possibilities that artifacts may be not considered as having the eligibility if it is mere applying of natural phenomenon, natural products as described above, and it is concerned.

2-3. Mental activity
 The mental activity itself does not use the law of nature, and in both Japan, the United States and Europe, it is common and reasonable to deny the invention eligibility for mental activity itself (16).

 However, about the applied invention (combinations with other types) including the mental activity in the claims, the countries do not necessarily agree with the reasons for the denial. As one example of the applied invention of such mental activity, business method invention is known.

 The United States has taken up as an abstract idea in the Bilski judgment and Alice judgment and made it a problem in the eligibility of the invention, but it has the drawbacks mentioned above (17).

 In Europe in regard to applied inventions, the part of business method, that is, the mental activity part is ignored in principle as a non-technical part in judgment of inventive step, but as an exception, If the mental activity part contributes to the technical nature of the invention, it can be considered as an inventive step judgment (18).

 In Japan, the "Interactive dental care network case" of Intellectual Property High Court ruling, is known as a judgment that covered the applying of mental activity, that is, the case involves mental activity in the claims (19).

However, this ruling discussed the invention eligibility but does not refer to the inventive step. Other judgements also discuss the mental activity as the invention eligibility problem (20).

 

 By the way, as far as the applied invention (the combination with matter and computers and so on) including mental activity, is using matter and computers, the hurdle of minimum utilization of natural law has already been exceeded, and It can be that invention eligibility is satisfied (the natural law utilization of the computer itself is explained in the next 2-4. Device for processing/carrier information).

In that case, in the inventive step judgement the handling of the mental activity part becomes a problem.
 Q & A on examination practices of "business related inventions" related to examination criteria in Japan (April 2003), explains the inventive step of business related inventions.
 That is, in response to the question 10 regarding the novelty/inventive step," in judging inventive step, rather than judging whether or not the business method itself has inventive step, It is judged whether or not the invention realized concretely by the business method, has inventive step... ... the new business method does not have possibility to become patent, but when the inventor concretely introduces the new business method on the computer to realize and construct an information processing apparatus etc., the judgment of inventive step is executed by judging whether the information processing apparatus etc. is easily created or not from known business method etc .. ".
 From here, we can draw out the concept that in the claim the part of the business method (ie the mental activity part) that is not specifically realized in the information processing apparatus etc. is not the basis for recognizing the inventive step.

In any case, in the case of applied inventions including mental activity, even if the eligibility of invention is affirmed in Japan, in the inventive step judgment, when the novel characteristic is only mental activity, the inventive step is denied irrespective of difficulty of the content, and I think it is appropriate (21) (22) (23). Mental activity is similar to that of Europe one.

                       (to be continued)

 

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