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

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INVENTION ELIGIBILITY OF JAPAN (part 2)

2017-07-10 15:08:42 | 知的財産権

 part 2;

 

2-4. Device for processing/carrying Information
  As shown in the reference diagram above, this device for processing/carrying Information can be classified into (A) device that deal with " information on matter" being to be processed by machine and (B) device that deal with " information on matter" being to be directly recognized by human (information carrier for human).

Further the device that deal with " information on matter" being to be processed by machine can be classified into (1) Information processing device and (2) Information carrier for information processing device(24).

 

A. a device that deal with " information on matter" being to be processed by machine
   (1) Information processing device
 In the United States, mathematical algorithms has of course no eligibility as such as abstract ideas themselves, and furthermore about the applied inventions of computers, if they are simply applied invention, they are not admitted to eligibility. However, as mentioned above there is a defect that the meaning of "not simple application, namely effectively more" is ambiguous (25).

 

In Europe, computer programs themselves do not have the invention eligibility. With respect to the applied invention in combination with the hardware, the eligibility of the invention is relaxed, and in the determination of inventive step, it is handled by technology / non-technology criteria (26).

However, as described above, there is a defect that the boundary between technology and non-technology is ambiguous.

 In Japan, regarding software related inventions, when information processing by software is concretely realized using hardware resources (hereinafter referred to as "concrete cooperation with hardware resources"), the invention eligibility is accepted affirming the utilization of natural law, in the examination standard and judgement etc. (27).

 By the way, for the reasons to be described below, I think that it is possible to treat the "concrete cooperation with hardware resources" not as a judgment criterion of eligibility requirement, but as definition requirement of invention of article 36 patent law.
 
 The reasons are as follows.

First, in the Tokyo High Court ruling on May 26, 1999 (Heisei 9 (gyoke) 206)), which is quoted in the current examination standard for reference on the point that the utilization of natural law as the requirement for eligibility of invention, there is described as " technology is a concrete means for achieving a certain purpose and it can be actually used ...", however It is not clear about the utilization of the natural law.
 Furthermore, in the Supreme Court ruling on October 13, 1971 (Showa 49 (gyotu No. 107), cited by the Tokyo High Court ruling , such described as "the technical contents of that (invention) should be concrete and objective to such an extent that a person skilled in the art can repeatedly carried out, thereby realizing the technical effect". Therefore it is discussing whether invention is incomplete or or not, however it is hard to interpret that it does directly refer to the existence of the utilization of natural law (28).
 
 Also, considering the point that machines which are matter (substances / energy) controlled by natural law, process the information, the hurdle of minimum natural law utilization has already been exceeded, and the invention eligibility can be satisfied (29).
 Further for the reasons below, the concrete cooperation with hardware resources can be dealt with in the judgment of definiteness requirements of the invention of Article 36 of the Patent Law.
 That is, software related inventions have essence on software (30).

Furthermore, the essence of the information processing of software is not the electrochemical phenomenon but content of human thinking.
 Therefore, human thinking contents and information processing contents of the machine will become similar. However, the machine is a machine that realizes the thought contents, to the last.
 Therefore, as long as the claims insist that the machine performs information processing, the cooperation with the hardware resources such as the computation unit, the storage unit etc. should be concretely described in the claim to the extent that it shows that it is not a human's thinking activity itself,
 

If such cooperation with hardware resources is not specifically described to that extent, there is possibility of such interpretation that about all or a part of claim as if a human is present in the machine who thinks so. Therefore even if the content of thought itself is clear, the invention should be judged as unclear and it should be rejected with the definition requirement of the invention of Article 36 of the Patent Law.

 Therefore, I believe that the ground for requesting concrete cooperation with hardware resources can be based on the definition of the invention of Article 36 of the Patent Law (31) (32).

 In addition, when the definition requirement of the invention is satisfied, judgment of inventive step will be carried out considering all contents of the description of claim without changing handling depending on the type of data (33). In this respect it differs from European way.

 

 (2) Information carrier for information processing device
 As a typical example, a computer program recording medium is known, but judgment on the invention eligibility is different in Japan, the United States and the Europe.
 By the way, as far as this information carrier utilizes matter, it is possible to affirm the minimum natural law utilization, and the eligibility of the invention can be affirmed. Furthermore, it is judged whether the invention is definite, and furthermore, in the case where it is definite, it is judged whether there is an inventive step.
 For example, in the computer program recording medium, if there is room for interpretation of human mental activity as described above, it is assumed that the invention is indefinite and it is definite if there is no room for interpretation, and further the invention will be checked by inventive step.

 

By the way, the recording medium with the data structure can be an example of the information carrier for this information processing device, and the eligibility of the invention can be accepted. On top of that, in such case that "... it seems that only using the general functions of a computer etc. is described at the using of the computer etc.", in other words, in case that that the specific cooperation with hardware resources is not described to an extent that there does not remain room for interpretation of human mental activity, it can be rejected with the definition requirement of the invention (34).

 Also, movie DVDs and karaoke videos are examples of this information carriers for this information processing device (35).
 
 B. Device that deal with " information on matter" being to be directly recognized  by human (information carrier for human)

Books and calendars are examples of cases where the recognition is visual. Braille paper is an example of a case where recognition is tactile.
 
 In principle, the invention eligibility is denied for the information carrier for humans themselves in the United States, Europe and Japan.
 However, even if it is an information carrier itself for human, as it is a matter, the least natural law of nature is utilized and the eligibility can be accepted.

 In addition, the information carrier for humans essentially requires human recognition activities in order to produce an effect (36) (In the case of not accompanied by a human's recognition activity, it is only a carrier with ink stains or with irregularities formed) and then in judging the inventive step, I think that it should be treated as follows.

 That is, since human recognition activity is one of mental activities and its recognition is essentially under human free will and then the expectation of repetition of the human recognition activity is weak. Therefore as in the explanation of Note (22) above, in the case where the difference from the prior documents etc. is only the content of the read result of the carried information, there is no reliable leaping property even if the read content seems difficult to conceive at first glance, and then I believe that inventive step should be denied in view of the original purpose of inventive step as eliminating inventions that do not contribute at all to the development of industry".

 
 However, in the human's direct recognition process, if there are novel features in the cooperative action (how) between human's biological function (visual, auditory, tactile, etc.) and features on the information carrier side (line position, coloration, irregular shape, etc.), I think that there can be grounds for inventive step (37).

 Also, if the claim includes other parts besides the information carrier for human, I believe that there may be case of positive for the inventive step of the claim (38).

AT THE END

As a result, comparing Japan, the United States and Europe about the invention eligibility, I think the Japanese practice is most stable and adequate (though as mentioned above, it is desirable to move the weight from the stage of invention eligibility to the stage of definition requirement or inventive step requirement).

 Anyway, I believe that international harmonization on the eligibility of invention, etc. should be realized in the way that U.S. and United States, Europe and other countries approach Japan's practice.


(Note)
(1)  Among those patented on the recording medium of the data structure, there are those which have little concrete cooperation with the hardware resources, for example Patent 4700383 (road map information)
(2)  State Street Bank 47 USPQ 2 d 1596 (CAFC 1998), Bilski 130 S. Ct. 3218 (2010), Prometheus 566 US 132 S. Ct. 1289 (2012), Alice 134 S. Ct. 2347 (2014)
(3)  Prometheus Judgment Paper 19-24 (III), Research Report on Patent Protection of Software Related Inventions - Heisei 24 -
(4)  New guidelines for computer programs 1985, VICOM trial decision T 208/84 (1986)
(5)  IBM T 1173/97 (1998), PBS PART NERSHIP T 931/95 (2000), HITACHI T 253/03 (2004), DUNS T 154/04 (2006)
(6)  "Software patents in the world - its theory and practice" - (Invention Promotion Association) 499 p
(7)  ibid 190p, 199p
(8)  explanatory text 2p in "(4) not use the law of nature" in "the invention that can be used industrially", under the current examination standards.  Further in a new examination standards applied from October 1, 2015, it is "2.1.4 those not using natural law".
(9)  by Yasuo Shizume, shioka ikehara translation "Human Machinery Theory", Misuzu Shobo, 1979
(10)  It is assumed that the physical space and physical time that defines the matter are also included.
(11)  Various definitions are known about what information is.

For example, "Information Science of Self-Organization" 1990 Yoshida tamito. Therefore, although there are several features of information, other social sciences and natural sciences aside from the field of patent law, the most important feature in the field of patent law is "It cannot exist without human mental activity." As is well known, there is newspaper because people recognize so, but it is only a dirty ink on paper from the physical property aspect. It is said that this characteristic is almost equivalent to "the narrow sense of information" that Yoshida tamito defines (Kumamoto University academic repository "Profit in gene information patent Ethics of allocation: consideration based on ownership idea "Koichi Nishida Bulletin of the Ethics Science Laboratory, Kumamoto University Bulletin 2010-03). Note that although genetic information falls within the broad sense of information that Yoshida defines, it is not the sense of narrow sense information and, it is an ordinary biological or chemical existence under the patent law. That is, it is the same dimension as information of the crystal structure of metal, for example.

(12)  Prometheus judgment, 2014, provisional guidance (December 16, 2014)
(13)  Prometheus patent EP application (application 99969336.9: publication number EP 1115403)
(14)  Tokyo High Court, February 13, 1990 (Showa 63 (gyoke) 133, Decision revocation Case)  Jurist Case 100 Selection 4th Edition "difference between Mere Discovery and Invention"  Explanation of the use Invention, 11p right column
(15)  Regarding the criticism for the preoccupation of the basic tool referred to in the U.S. judgment, even if it is so, it should not be taken out in the right setting stage where there is a high possibility that the legal stability will be impaired, and it is desirable to be considered in the right exercise stage.
(16)  Normally, mental activity involves physical activity (natural phenomenon), and pure mental activity is only thought.
(17)  In addition, it is considered that "economic basic concepts established in the world" as one of the abstract ideas, are originally known art, and the mere applied idea is necessarily denied by the inventive step, and therefore I think that it is not necessary to stick to treatment on the invention eligibility.
(18)  COMVIK Trial Decision T641 / 00 (2002)
(19)  Bidirectional Dental Treatment Network Case (Intellectual Property High Court Judgment on June 24, 2008 (Heisei 19 (gyoke) No. 10369 Decision Revocation Case))
(20)  Telephone poll advertisement method Case (Tokyo High Court Decision on Dec. 25, Showa 31 (Showa 31 (gyona) No.12 suit to rescind trial decision)) Patent cases selection 100 (3rd edition)
(21)  "Where the difference from the one disclosed in the prior document is only in the difference of agreements, and it is not accompanied by technical means particularly suitable for realizing the agreement as the content of the business method, "Inventive step" is immediately denied ... "Yoshiaki Aida" Progress of the Invention "supervised by Minoru Takeda" Law and Problems of Patent Examination and Judgment "(Invention Association, 2002) 228 p

(22)  In the background of such thinking there seem such below considering.

That is, the biggest feature of mental activity is a free will and this is weak essentially at repetitive expectation ( "bilingual dictionary case" Intellectual Property High Court August 26, 2008 ruling ( 2008 (Gyoke) No. 10001 decision revocation ) 12p "human is free to act and has self-determination...").

Further on the other hand, the inventive step requires certain leaps for prior art (the original purpose of the inventive step is to eliminate inventions that do not contribute to industrial development at all "International comparison of examination criteria, Jurist no. 1189 36p Aiida Yoshiaki"), and then if the the differences is only mental activity, inventive step should be denied.

It should be noted that, even though the mental activity is weak at repetitive expected, it is overkill that such invention including mental activity should be immediately denied by inventive step (by the way, in the above-mentioned "bilingual dictionary case" 12p " it is not possible to deny the invention eligibility of Patent Act 2, para.1 just because the human mental activity is included in the invention ").

 Therefore, if novel features include other types such as matter, it is possible that positive leaps can be affirmed with engagement with it, and it has been patented so far. Even if it is affirmed as such, in judgment of patent right infringement case, corresponding of only human mental activity parts is not infringement, I think that there is no possibility of monopolizing mental activity excessively (Intellectual Property Law Policy Studies vol.34 (2011) Shugou 405p monopoly is pointed out).
(23)  tokugikon 2012.11.13. No.267 62p "Dialogue over Intellectual Property Law" Totugi A mild judgment of inventive step is discussed from such large enclosed non-technology.
(24)  Classification of US MPEP 211.1.05 Functional and Nonfunctional Descriptive Material (Ninth Edition, March 2014) and the classification of this thesis do not necessarily correspond to this classification of this paper.
(25)  Benson 409 US 631575 USPQ (1972), Diehr 450 US 17518 2 (1981), The corresponding Japanese application to the Benson 409 US 631575 USPQ (1972) was permitted in Japanese Patent No. 515699.
(26)  HITACHI T 258/03 (2004)
(27)  In "Apparatus that generates abbreviated representation of a group of bits" Intellectual Property High Court judgement on February 29, 2008 ( Decision Revocation Case in Heisei 19 (gyoke) 10239), " But it does not describe a specific circuit configuration for computing the mathematical algorithm with the digital arithmetic device ", and rejects it as lacking the eligibility requirement.
(28)  The Supreme Court Judgment (Showa 49 gyotu No. 107) is introduced in the Jurist cases 100 selection edition 4th edition "invention completion and refusal reasons". In Annex B of the New Patent and Utility Model Examination Handbook which will be applied from October 1, 2015, it seems that reference to such a Tokyo High Court ruling on May 26, 1999 (Heisei 9 (gyoke) 206)) is gone.
(29)  Software patents of the world - its theory and practice - (Invention promotion association) 85 p
(30)  ibid 62p
(31)  Even though according to this paper, there still may be annoyance to the extent of the concrete description, but the problem is the same also in inventions of popular matter, and there are still difficult points such as relations with known technologies. Also, this discussion is a separate argument from another discussion about whether such claim is indefinite or not that is super-classified by not specifying whether each step is processed by a machine or human.

 To the last, the description of cooperativity is required in case of such claims where machine processes.
(32)  Even if the "concrete cooperation with hardware resources" is transferred from the invention eligibility stage in the first sentence in Section 29 (1) to the definition requirement stage of Article 36, It seems that there is no change in the allowance of patent so much.
(33)  The standard of inventive step judgment (the effect should also be taken into consideration) should not be different according to data type of for example Natural science data (earthquake simulation apparatus, genetic information analysis system), economic data (bookkeeping apparatus), resources and key data (Karmarkar's algorithm method (patent No. 2033073 "optimal resource allocation method") and Cryptographic device), information processing data(multi-processing device of task as computer processing unit)),. mathematical data, etc.  

Even about bookkeeping apparatus etc., as long as they are machine processing, repetitive expectation and certainty are guaranteed.

In regard to criticism too much preoccupation of the basic tool referred to in the US judgment, even if it is so, I think it is not to be taken out in the right setting stage where there is a high possibility that the legal stability will be impaired, but  it is desirable to be taken up at the stage of exercising of the right.
(34)  In Annex B of the New Patent and Utility Model Examination Handbook applied from October 1, 2075, although it is in the judgment of the invention eligibility, there is such statement of "concrete cooperation with hardware resources is necessary ".
(35)  In the case of the movie DVD, the invention eligibility is affirmed because of the use of a matter called DVD, and in the judgment of inventive step, in case that new effects against the prior art are only movie contents, then the inventive step is denied for the same reason as explained in the information carrier for human.

And Karaoke video recording medium of the case of a video recording medium case (heisei 9 (gyoke) No. 206 (Tokyo High Court, May 26, 1999 ruling)) is an example of the Information carrier for information processing device, and the cooperation with the device can barely be read from the insisted effect, so the eligibility of the invention is affirmed (In this paper I will judge definition requirement and inventive step on affirming the eligibility.).
(36)  in "Roman letters table case" Intellectual property high court decision July 11, 2012(Heisei 24 (gyoke) 1,0001 decision ruling cancellation case)  invention eligibility requirement is judged and denied , but at that time, word recognition is a result of learning and it is said that it is belonging to mental activity to demonstrate it.
(37)  in "Bilingual dictionary case" Intellectual property high court Decision on August 26, 2008 (Heisei 20 (gyoke) No. 10001 trial decision cancellation case), although not treated as inventive step, the utilization of natural law is found in consonant recognition ability and affirmed of the invention eligibility. The boundary with mental activity is a critical example.
(38)  In the case where the computer program list can be processed by the optical reading device (computer), it is a case that it is an information carrier for a human as well as an information carrier for information processing device. Although as to the human aspect the inventive step is week, however there may be cases where total inventive step can be affirmed if there are novel features in computer processing.

 

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