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JPO Updates and Initiatives:- Delivering Value to Global IP Stakeholders -
Tech Trend
Users
Global Network
1
Facts & Basics
World's Third Largest Economy
3rd in the WorldThe Global Competitiveness Report 2019 (World Economic Forum)
Total GDP
Reason 1
Open as an Innovation Hub
1st in the World「THE TOP 100 SCIENCE AND TECHNOLOGY CLUSTERS」
(World Intellectual Property Organization)
Industrial clusters(Tokyo-Yokohama)
Reason 2
Excellent Business Environment
2nd in the WorldThe Global Competitiveness Report 2019 (World Economic Forum)
Adequacy of Regulatory and Administrative Systems
Reason 3
Stable Infrastructure
1st in the WorldThe Global Competitiveness Report 2019 (World Economic Forum)
Efficiency of Public Transport Services
Reason 4
Livable Society
1st in the WorldSafe Cities Index 2019 (The Economist Intelligence Unit)
City Safety
Reason 5
WHY JAPAN ? "5 Reasons to Invest in JAPAN"
Information in this slide is based on WHY JAPAN? 5 Reasons to Invest in JAPAN on JETRO website.Please refer to “https://www.jetro.go.jp/en/invest/investment_environment/" for further information.
Starting Business with/without an IP Strategy Introduction
Come up with a great idea
• Give a name• Develop a product
Launch the product
Rename/Redevelop the productCompensate for damages
No filing of IP applicationNo Patent/Design/Trademark search
Receive a warningFace a lawsuit
Functions of Intellectual Property Rights Introduction
Exclusivity
DifferentiatingAnti-Counterfeiting
Competitor
Counterfeitgoods Collaboration
Openinnovation Major
corporationsDifferentindustries
Trust
Financing, M&ATechnological strength
BrandingStability
Consumer
VCCVC
JPO Updates and Initiatives:- Delivering Value to Global IP Stakeholders -
5
Tech Trend
Users
Global Network
Facts & Basics
Facts & Basics
WIPO Global Innovation Index
6
50.4
50.7
50.9
51.8
53.1
53.4
53.7
54.5
54.8
55.0
57.3
57.3
57.8
58.4
58.6
59.3
59.8
61.3
63.1
65.5
Norway
Ireland
Austria
Iceland
Canada
Israel
Hong Kong
Japan
China
France
Germanry
Denmark
Singapore
Finland
Netherlands
Republic of Korea
UK
USA
Sweden
Switzerland
Japan 13th
Institutions 7th
Infrastructure 9th
Business sophistication 10th
Knowledge & technology outputs 11th
Global Innovation Index 2021 13th
Market sophistication 15th
Creative outputs 18th
Human capital & research 20th
Strength
Weakness
R&D
Business environment
Education Online Creativity
Investment
IP
Market Scale
ICT
(Overall report) https://www.wipo.int/global_innovation_index/en/2021/(Report on Japan) https://www.wipo.int/edocs/pubdocs/en/wipo_pub_gii_2021/jp.pdf
New business
Overall Ranking 2021 (Score)
Facts & Basics
WIPO Global Innovation Index
7(GII 2020 Chapter 1) https://www.wipo.int/edocs/pubdocs/en/wipo_pub_gii_2020-chapter1.pdf
Quality of Innovation Ranking 2020
University Patent Academic paper
Facts & BasicsWell-developed IP system in Japan
8
• 5th in the overall score, following US, UK, Germany and France.
• 2nd in the patents score, following Singapore.• Evaluating the IP framework in each country across
9 categories. (1) patents, (2) copyrights, (3) trademarks, (4) design rights,
(5) trade secrets, (6) commercialization of IP assets, (7) enforcement,
(8) systemic efficiency, (9) membership and ratification of international treaties
(Overall report) https://www.theglobalipcenter.com/report/ipindex2021/
Overall Patents Design Rights Trademarks Enforcement
Score 91.12 94.44 100.00 87.50 87.13Rank 5/53 2/53 1/53 4/53 7/53
High Ratingin U.S. Chamber International IP Index 2021
Facts & Basics
9
• Design Act amendments came into effect in 2020 -increase term of protection.
• Global leader with respect to targeted administrative incentives for the creation and use of IP assets for SMEs.
• Licensing guidelines published by JPO provide balanced approach to licensing terms and conditions for SEPs.
• Strong, sophisticated national IP environment in place with relevant IP rights and protection available for all major IP rights categories.
(Japan’s economy report) https://www.valueingenuity.com/ip-index/map/jp/
Strengths of Japan from the report
Well-developed IP system in Japan
Facts & BasicsStrengths of JPO
10
Speed Quality Global
10.2 months
First ActionPendency
15.0 months
TotalPendency
95.1 %
Users’ Satisfaction
Around 1,400Interview Practice
45 IP Offices
PPH partners
Over 81,000PPH based on
JPO’sExamination results
FY 2020
FY 2020
FY 2021 Survey
(as neutral or higher)
Jan 2022
FY 2020 end of December 2020
Facts & BasicsSpeed: ３ Tracks to Choose
11
Normal
15.0 monthsTotal Pendency
Fast Track Super Fast Track
5.8 months 2.8 months
FY 2020 FY 2020 FY 2020
Free of Charge
Total Pendency Total Pendency
USPTO EPO CNIPA KIPOFA Pendency (2019) 13.3 months 5.5 months 14.9 months 10.8 months
Total Pendency (2019) 21.8 months 28.1 months 22.2 months 15.6 months
0.9 month10.2 monthsFirst Action Pendency
First Action Pendency
2.8 monthsFirst Action Pendency
IP5 Statistics Report 2019, Chapter 4
Accelerated Exam. Super Accelerated Exam.
Facts & BasicsAccelerated Examination
12https://www.jpo.go.jp/e/system/patent/shinsa/jp-soki/
10.2 months
2.8 months
Free of charge
For more information ->
No special requirements.Just make a request !
Facts & Basics
13
Accelerated Exam. Super Accelerated Exam.
2.8 months 0.9months
Free of Charge
First Action Pendency
First Action Pendency
Applied to Working-related applications ※
5.8 monthsTotal Pendency 2.8months
Total Pendency
※An applicant or a licensee has already commercialized or plans to commercialize the invention within 2 years.
Super Accelerated Examination
Free of Charge
Much Faster
https://www.jpo.go.jp/e/system/patent/shinsa/jp-super_soki/index.html
For more information ->
Facts & BasicsQuality: High Evaluation by JPO Survey
14
Percentage of neutral or higher in overall quality of examination on national applications,
Results of User Satisfaction Survey(FY 2021)https://www.jpo.go.jp/e/resources/report/user/2020-tokkyo.html (patent)
Number of subjects surveyed (patent)
・Domestic applicants: 562・Foreign applicants: 42・Patent attorneys: 50
95.1
94.2 91.7
Facts & Basics
15
Quality: High Evaluation by IAM Survey
15Drawn up on the basis of “Benchmarking the IP5”, IAM (11/29/2021)https://www.iam-media.com/report/special-reports/q4-2021/article/benchmarking-the-ip5
94%
89%
89%
74%
72%
Percentage of Excellent, Very good or Good
Quality of patents issued by IP5 offices
Facts & BasicsTowards the World’s Highest Quality Examination
(Quality Management on Patent Examination) https://www.jpo.go.jp/e/introduction/hinshitu/shinsa/tokkyo/ 16
QM Officer
Sample CheckCheck by Directors
Director
Annual User Survey
Users
Good!
All Office Actions
ConsultationsAmong Examiners Key Points of
Quality Management
QualityAssurance
QualityVerification
Expert’sEvaluation & Feedback
Examiners
Around
20,000cases
FY2020 FY2021
95.1%(Patents)
Satisfaction
Subcommittee on Examination Quality Management
to grasp quality by itselfto enhance qualityFeedback to examiners
Facts & BasicsUsing AI to Improve Quality and Efficiency
17
Patent Classification
Suggesting Search Query Patent Image Search
Re-ranking Patent Documents
In-house development ofprior art search system using AI
Non-JP Patent documents
Automatic FI/F-term Assignment
Query Suggestion
ExaminerExaminer Search results
・・・Search query
Search Results1. JP2018-10007A2. JP2018-10005A3. JP2018-10001A･･･100. JP1998-10001A
High
Low
Re-rank based on the machine-learned model
Possibility to be cited
Information Exchange with External AI Experts
A61B34/35,B25J13/00, ･･･
A61B34/35, B25J13/00robot, manipulatorarm, master, ･･･
https://www.jpo.go.jp/system/laws/sesaku/ai_action_plan/index.html
Facts & BasicsDesign: Main Values (Speed, Quality)
Facts & BasicsDesign: Contributing to innovation and branding
19
Revision of the Design Act (1)
361 1,189 2,469
2020.4 2020.12 2021.9
Facts & BasicsDesign: Contributing to innovation and branding (cont’d)
20
Enhancement of the Related Design SystemRevision of the Design Act (2)
Revision of the Design Act in Japan https://www.jpo.go.jp/e/resources/report/sonota-info/document/pamphlet/isho_kaisei_en.pdf
Facts & BasicsDesign: Examples of Counterfeit Goods Seized by Customs
21
FanDesign Registration
No.1371412
EarphonesDesign Registration
No.1585727
BatteryDesign Registration
No.1483996
Facts & BasicsDesign: Import Seizures at Customs (Number of Cases)
22
40 36 87
304
433
289 323
2014 2015 2016 2017 2018 2019 2020
Facts & Basics
23
Trademark: The outline of Trademark system of Japan
First-to-fileprinciple
The applicant who filed the application firstwill be entitled to register a trademark,
not “first to use”.
Registrationprinciple
An exclusive right to a trademark is granted after the mark is registered.
The statement of use is not required as a general rule.
Substantial Examination
Examiners conduct examination of absolute and relative grounds for refusal.
Non-TraditionalTrademarks
3D, Sound, Color per se, Position, Motion, Hologram and Exterior
and Interior design of buildingsare eligible for registration
Facts & Basics
24
Trademark: Examination on Relative Grounds for Refusal
JPO Cross-searches Classes of Goods and Services by Checking Similar Group Codes
Class 18
19B33
Class 28
Similar
Class 35Retail service
for pet clothing
Clothing for pets
Toys for pets
Similar Group Codes
19B3319B33
Facts & Basics
25
REG5858802
REG5985747
3D mark Color mark Position mark
Sound markMotion mark
REG5225619
REG5860064 REG5804315
Hologram mark
REG5933289
Trademark: Non-Traditional Trademarks
Facts & BasicsTrademark: Speed: Three Tracks to Choose From
26
Normal Fast Track Accelerated Examination
Total pendency of other offices (2019)Japan USA China Europe Korea
10.3 months 9.4 months 4.5 months 30 days 10.5 months
First Action(2020FY)
• The first action and total pendency of TM application is around 10 months.• JPO conducts Fast Track and Accelerated Examinations for applicants
who need to acquire rights on an expedited basis.
10.0
6.0
1.9
Facts & BasicsTrademark: Enforcement
JPO Updates and Initiatives:- Delivering Value to Global IP Stakeholders -
28
Tech Trend
Users
Global Network
Facts & Basics
UserInterview with Patent Examiner
29
At any stage of examination.
When?
How to request
Ask your agent in Japan to contact the examiner.
Requirements
Participation of your agent in Japan (Online participation is acceptable).
An interpreter may be required in case of complicated technology.
Online Interview
Online interview is conducted via Internet.
There are no restrictions on the location of the participants.
https://www.jpo.go.jp/e/system/patent/shinsa/junkai.html
Interview cases in FY 2020
Around
1,400
UserCollective Examination for IP Portfolio (CEIP)
30
IP portfolio related tothe same business project
Package Examination for an entire product/service.
What?
Cross-sectional examination of multiple (types of) IP applications.
How to request
Contact the JPO directly-> [email protected]
Some documents are required in the request.
Requirements
A team of examiners
To support development of business projectsNo additional fee
Grant rights at the best timing.
https://www.jpo.go.jp/e/system/patent/shinsa/matome_sinsa.html
Explanation of business project and relevance of applications in a hearing or interview.
All of applications are related to a new or international business.
UserCase of Collective Examination for IP Portfolio (CEIP)
31
Moony Air-fit
Source: Unicharm Corp. News release(April 2013)
IP protection was completed before new products were put into the market, to promote business development.
A new Shape having gentle curve to fit the baby’s body
Babies’ nappy by Unicharm Corp.
80IP rights
UserCase of Collective Examination for IP Portfolio (CEIP)
32
The concurrent grant of the patents and trademarks helped us to enhance the value of our new business.The protection of all IP rights enabled us to build an effective entry barrier against our competitors.
“the 3rd kitchen” by Kai Corp.
A food service that delivers recipes and meal kits to office workers so that they can cook in their meeting rooms.
New business “the 3rd kitchen®”
CEIP
Branding of the new service name
Business model of the new service
Consultation among
examinersExam. Interview Exam.
Grant of rights
Businessexplanation
Request for CEIP Start the
new business
Mar. 2021 Aug. 2021All IP rights granted within 5 months Sep. 30, 2021
6 Patents2 Trademarks
Granted quickly ※
※ Accelerated examination was requested for some of the applications.
Source：Kai Corp. Press Release（https://www.kai-group.com/news/id/1918/）the 3rd kitchen® Official HP
（https://the3rdkitchen.com/）
User
Company
Distributioncompany
Deliverycompany
Foodcompany
Administrationserver
User
33
Guide to Licensing Negotiations involving SEPs
Main Issues:“Good Faith” in Licensing NegotiationsParties to Negotiation in Supply ChainRoyalty Base (e.g., SSPPU v EMV)Royalties for Different Uses
NOT legally binding, NOT prescriptive
Published through Open Dialogue with Global Stakeholders29 Sep 2017-10 Nov 2017 Proposals (~50 submissions from inside/outside Japan)9 Mar 2018 - 10 Apr 2018 Public comments13 Mar 2018 International Symposium5 Jun 2018 Publication of the guide
2022 Revised edition to be published
Open and transparent process
Voices from users• Well-balanced between patent
proprietor and implementer• Comprehensive and easy-to-
understand• Best SEP-related document!
Available in JP/EN
User
34
“Hantei ” (Advisory Opinion) System
Hantei systemhttps://www.jpo.go.jp/e/system/trial_appeal/shubetu-hantei/index.html
Request for “Hantei ” • Low cost (40,000 yen per case) • Specify an object, product, etc.• make a comparison with the patented invention
Reply
Proceedings by an Administrative Judge Panel• Process by three administrative judges• Compare and determine claims of the patented invention and the object, product, etc.
“Hantei ” (Advisory Opinion)• Prompt conclusion (administrative service that is not legally binding)
- 3 months at the earliest. • Whether the object, product, etc. falls or does not fall within the technical scope of the
patented invention
Demandee
Demandant
User
35
“Hantei ” – Example -
Hantei system https://www.jpo.go.jp/e/system/trial_appeal/shubetu-hantei/index.html
Lawsuits
Request for “Hantei ”
* The Hantei system can be used for patents, utility models, designs and trademarks.
Patentee Alleged Infringer
VS.
TimeMoney…
“Hantei ”The object, product, etc. falls within the technical scope
of the patented invention.
SettlementSettled without lawsuits at a reasonable price
User
36
“Hantei ” (Advisory Opinion) for Essentiality Check
Manual of “Hantei ” (Advisory Opinion) for Essentiality Check https://www.jpo.go.jp/e/support/general/sep_portal/document/index/manual-of-hantei.pdf
User
37
Introduction of a system for calling for third-party comments in patent infringement litigation
Patentee Suspectedinfringer
Scholars / Lawyers /Experts, etc.
Industry groups /Companies, etc.
Overseas groups /Companies, etc.
Comments
Court
In patent infringement litigation, etc., if the court, at the motion of a party, finds it to be necessary, the court should be able to seek comments from third parties regarding necessary matters such as the application of the Patent Act to the case.
Effective date: April 1, 2022
User
38
Inspection System
(1)PetitionRigorous
requirements
Right holder Alleged infringer
Report creation disclosure
Expert+
Court executionofficer
- Enters property- Asks questions- Asks to be shown
documents- Operates equipment- Measures- Conducts experiments
(2)
(3)
User
39
Damages Calculation Method Revised Newly
Sum Equivalent to licensing fee
- Deeming that the right-holder had licensed the portion to the infringer
- Assuming patent rights infringement
Current Damages
Profit per unit
Volume of infringing products sold
Right-holder’s production/sales capacity
Determination of damages for portion beyond rights-holder’s production/sales
capacity, etc.
UserDesign & Trademark: Addressing an increasing number of imported counterfeit products for private use
Revision of the Design Act in 2021(to be enforced in 2022)
UserSchedule of Fees
Patent application ¥14,000
Application in foreign language ¥22,000
Entry into the national phase in Japan (under the PCT) ¥14,000
Filed* on or before Mar/31/2018 Filed* on or after Apr/1/2019
(a) Request for examination ¥118,000+(¥4,000 per claim) ¥138,000+(¥4,000 per claim)
(b) -where the international search report has been established by the JPO (under the PCT) ¥71,000+(¥2,400 per claim) ¥83,000+(¥2,400 per claim)
(c) -where the international search report has been established by an International Searching Authority other than the JPO (under the PCT)
¥106,000+(¥3,600 per claim) ¥124,000+(¥3,600 per claim)
(d) -where the search report has been established by a designated searching organization ¥94,000+(¥3,200 per claim) ¥110,000+(¥3,200 per claim)
Requested for examination on or before Mar/31/2004
Requested for examinationon or after Apr/1/2004
1-3rd year ¥10,300+(¥900 per claim) ¥2,100+(¥200 per claim)
4-6th year ¥16,100+(¥1,300 per claim) ¥6,400+(¥500 per claim)
7-9th year ¥32,200+(¥2,500 per claim) ¥19,300+(¥1,500 per claim)
10-25th year ¥64,400+(¥5,000 per claim) ¥55,400+(¥4,300 per claim)
as of Apr/1/2021
*for (b) and (c), international filing date
Application
Request for Examination
Annual Fee
Patent
User
as of Apr/1/2021
Utility Model application ¥14,000
Entry into the national phase in Japan (under the PCT) ¥14,000
(a) Request for Registrability Report ¥42,000+(¥1,000 per claim)
(b) -where the international search report has been established by the JPO (under the PCT) ¥8,400+(¥200 per claim)
(c) -where the international search report has been established by an International Searching Authority other than the JPO (under the PCT)
¥33,600+(¥800 per claim)
Application
Request for Registrability Report
1-3rd year ¥2,100+(¥100 per claim)
4-6th year ¥6,100+(¥300 per claim)
7-10th year ¥18,100+(¥900 per claim)
Annual Fee
Utility Model
Schedule of Fees
User
Design application ¥16,000
1-3rd year ¥8,500
4-25th* year ¥16,900
as of Apr/1/2021
Application
Annual Fee
Trademark application ¥3,400+(¥8,600 per classification)
Registration Fee ¥28,200 per classification
-Payment of registration fee by installments ¥16,400 per classification
Renewal Fee ¥38,800 per classification
-Payment of renewal fee by installments ¥22,600 per classification
Application
Registration and Renewal Fee
Design
Trademark
*4-15th years for design applications filed by Mar/31/20074-20th years for design applications filed by Mar/31/2020
Schedule of Fees
JPO Updates and Initiatives:- Delivering Value to Global IP Stakeholders -
44
Tech Trend
Users
Global Network
Facts & Basics
Tech TrendAI Examination Support Team
45https://www.meti.go.jp/english/press/2021/0120_002.html
ConsultationExaminer
Examination Dept.(Mechanical tech.)
Examination Dept.(Physics, Optics, etc.)
Examination Dept.(Chemistry, Life Science, etc.)
Examination Dept.(Electronic tech.)
Expert on AI Examination
Policy Review
Sharing Knowledge
Manager
AI ExaminationSupport Team
Tech TrendExamination Case Examples on AI/IoT related technologies
Tech TrendManga Patent Examination Guidelines – AI/IoT fields –
47https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/comic_ai_iot_e.html
Easy to understand for everyone
JPO Updates and Initiatives:- Delivering Value to Global IP Stakeholders -
48
Tech Trend
Users
Global Network
Facts & Basics
GlobalPatent Prosecution Highway (PPH)
49
Search/Examination Patentable
Application
First Office
Application
AcceleratedExamination
Second Office
PPH Request
https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/index.html
US
Examination Cooperation Program between two OfficesJP
GlobalPCT-PPH
50https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/index.html
International Phase National/Regional Phase
PCT Application
WO or IPER
Positive opinion
PCT work products
DOApplication B
DOApplication C
DOApplication A
PCT-PPHRequest
AcceleratedExamination
PPH based on PCT international work products including WO and IPER
US
ISA/JP
Global
Countries/Regions with PPH partner offices of JPO (purple colored)
Number of PPH partner Offices (2022.1)JP US KR CN EP
PPH (all) 45 37 36 29 16PCTPPH 39 30 31 23 15
Global Patents with JPO as a starting point
JPO’s PPH* network
51https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/index.html
PPH with JPO only
45IP Offices
Largest PPH network in the world based on JPO’s reliable examination results
With
Faster Higher Grant Rate Lower CostID
TH
IN
GlobalBenefits of PPH for applicants
52
All applications PPH applications
First Action Pendency Grant Rate Grant Rate at the First Action
0
20
40
60
80
100
Japan U.S. Korea Canada0
10
20
30
40
Japan U.S. Korea Canada0
4
8
12
16
20
Japan U.S. Korea Canada
(Months) %%
(Stat: Jul. 2020~Dec. 2020)
HigherGrant rate
LowerProsecution costs
FasterPatent grant
Global
PPH with ASEAN countries
High Speed
Best Quality
Building IP Portfolio in ASEAN – PPH –
53
5.8 months for grant in Japan(Fast track)
About 1 year for grant in ASEAN(PPH)
＋
Grant rate：more than 90%
53
Based on JPO’s research
The only office that implements PPH with all ASEAN6 Offices
TH
MY
SG VNPH
ID
TH MY PH VN SG ID
8.3 years 6.8 years 5.7 years 5.4 years 4.0 years 3.8 years
Total pendency from filing to registration (2019)
https://www.jetro.go.jp/ext_images/world/asia/asean/ip/pdf/report_202003_asean1.pdf
PPH
Global
・CPG (Cooperation for facilitating Patent Grant) with Laos and Cambodia
Building IP Portfolio in ASEAN – CPG・PPH Plus –
54
Patent granted in Japan
Granting a patent quickly without substantial examination
＋
54
Obtain patent rights quicklywithout substantial examination
(CPG) https://www.jpo.go.jp/e/news/kokusai/kyoryoku/(PPH Plus) https://www.jpo.go.jp/e/news/kokusai/pph_plus_guideline.html
LA
KH
BN
PPH Plus
CPG ・PPH Pluswith Brunei
CPGPPH Plus
Applicant’s request for CPG or PPH Plus
GlobalJPO as ISA for PCT applications
5555https://www.jpo.go.jp/e/news/kokusai/isa_ipea/pct_isa_ipea.html
12 Offices where the JPO is a competent ISA and IPEA
USPTO as Receiving Office (RO/US)
RO/IN
RO/SG, RO/MY, RO/TH, etc.
JPO as International Search Authority (ISA/JP)
PCT Filing in English
SG
ID
US
IN
MY
TH
VN
PH
KRLA
KH
BN
GlobalBenefits of ISA/JP
No Stress to understand- High quality report in English
5656https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/pct_products.html
PCT-PPH from JPO to 39 Offices
e.g. RO/SG
and more
WO or IPER
Positive Opinion
PCT-PPH
Benefit 2
Benefit 3
No Cost to Translate into Japanese- PCT Filing in English
Benefit 1
ISA/JP
GlobalBenefits of ISA/JP
5757
(WIPO PCT Yearly Review 2021)https://www.wipo.int/edocs/pubdocs/en/wipo_pub_901_2021.pdf
Timeliness in transmitting ISRs to the IB, measured from priority date by ISA, 202099.9%
100.0% 99.9% 99.3% 96.1% 90.5% 80.0% 78.2% 66.5%
0%
25%
50%
75%
100%
SG JP RU US KR AU EP CNWithin 9 Months More than 9 months
International Search Fee (in the case of filing in English) (2021.8)ISA US EP AU SG JP KR RU CNFee
(US $) 2,180 2,091 1,697 1,646 1,476 1,036 543 328
Benefit 4
(Main ISAs)
Benefit 5
58
Thank you!
Tech Trend
Users
Global Network
Facts & Basics
Patentability of Computer Software Inventions
in Japan
APPENDIX
59
Japan Patent Act and “Invention”
60
Statutory "Invention"Art. 2 (1)
"Invention" in this Act means the highly advanced creationof technical ideas utilizing the laws of nature.
4 RequirementsDefinition of Invention
• Claimed subject matter is eligible when it falls under the definition of “Invention” defined in the Patent Act above.
Ineligible subject matter list
Examination Guidelines Part III, Chapter 1, 2. 61
A highly advanced creation of technical ideas utilizing laws of nature
× Laws of nature as such× Not utilizing laws of nature
× Personal skill× Mere presentation of information
× Mere discoveries of things in nature
Technical Ideas
Highly Advanced Not necessary to be considered
(i) Any laws other than laws of nature(iii) Mathematical formula(v) Those utilizing only (i) to (iv)
(ii) Arbitrary arrangements(iv) Mental activities of humans
A rule for playing a game as such
Methods for doing business as such
Image data taken with a digital cameraComputer program list
Utilizing Laws of Nature
Creation
Almost the same criteria as other major countries
Two major eligible subject matter examples
Examination Guidelines Part III, Chapter 1, 2. 62
Those concretely performing control of an apparatus, or processing with respect to the control
Those concretely performing information processing based on the technical properties such as physical, chemical, biological or electric properties of an object
e.g., rice cooker, washing machine, engine, hard disk drive, chemical reaction apparatus, nucleic acid amplifier
e.g., rotation rate of engine, rolling temperature, relation between gene sequence and expression of a trait in a living body, physical or chemical relation of bound substances
(i)
(ii)
Naturally eligible because of their technical character
When not falling under two major eligible examples …
63
Eligibility of software invention is determined bywhether or not "information processing by the software is concretely realized by using hardware resources“
Examination Handbook Annex B, Chapter 1, 2.1
General software Inventions Business method, GUI, Statistical analysis, Information recommendation, Data mining, Data classification, Database management, Natural language processing, Information security, Data encryption, and so on.
This requirement is not strict
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A computer implemented method comprising;predicting sales of the predicted date based on the past sales records and
weather forecast data; andoutputting the predicted sales.
A computer implemented method comprising:storing (i) past sales records, (ii) future weather forecast data and (iii)
correction rules corresponding to weather; getting the first predicted value by reading sales records of the past several
weeks, wherein said first predicted value is the average of said read sales records being of the same day of the week as that of the predicted date;
getting weather forecast data of the predicted date, and selecting correction rules to be applied based on said weather forecast data;
determining the second predicted value by correcting the first predicted value based on said correction rules to be applied; and
outputting the second predicted value.
○ Eligible: information processing is concrete
× Ineligible: information processing is not concrete,mere desire or result to be achieved
Predicting sales based on past sales and weather forecast
Boundary between eligible / ineligible software inventions
