TOPICS

“Commercial Transaction System, Administration Server, and Program”

Overview:

The court rejected the plaintiff’s request for recission of a Japan Patent Office (JPO) trial decision (that dismissed a request for patent invalidation) finding no merit in the alleged lack of eligibility as inventive subject matter and inventive step of the patented program invention.

▶Summary of Judgement and Link to Full Text (Japanese)

Main Issue:

This article presents the court’s finding regarding the issue of whether the patented program invention constitutes an “invention” under Patent Act Article 2(1) (patent eligibility).

Court Finding:

The court affirmed the patent eligibility of the invention, stating as follows:

“According to the description of the claims, the patented invention is a program that causes a computer to execute the steps of: receiving a registration request including product information; transmitting the registration request to a customs clearance authentication device; obtaining advance customs clearance information from the customs clearance authentication device; and notifying a commercial transaction device of the advance customs clearance information. The specification of the subject patent provides concrete explanations of the significance of the customs clearance authentication device (which is understood to be synonymous with a ‘customs clearance authentication server’) and the advance customs clearance information referred to herein. The patented invention adopts the above configuration in an attempt to achieve smooth customs clearance processing by solving the problem of the prior art, in which customs clearance workload increases and logistics stagnate due to the discovery of facts such as failure to satisfy customs clearance conditions during customs clearance procedures after the purchase of goods.

Accordingly, it can be deemed that the software-driven information processing is concretely realized using hardware resources in the patented invention, and thus it is recognized as constituting an ‘invention’ (Patent Act Article 2(1)) as a creation of technical ideas utilizing the laws of nature.”

Comments:

It seems that many conventional judicial precedents that ruled on the patent eligibility of software-related inventions were based on the standard of whether the subject matter can be deemed to constitute a “creation of technical ideas utilizing the laws of nature” as a result of considering the matter as a whole in light of technical significance, such as the underlying technical problem, the configuration of technical means for solving that problem, and the effects derived from that configuration (hereinafter referred to as the “comprehensive consideration standard”) (e.g., IP High Court Judgment 2019 (Gyo-Ke) No. 10110 (“Method for Settling Electronically Recorded Monetary Claims”, June 18, 2020), IP High Court Judgment 2014 (Gyo-Ke) No. 10014 (“Knowledge Base System”, September 24, 2014)).

On the other hand, the Examination Guidelines for Patent and Utility Model (Part III, Chapter 1) and the Examination Handbook (Annex B, Chapter 1) of the JPO set forth that “software-driven information processing is concretely realized using hardware resources” (hereinafter referred to as the “standard for concrete realization using hardware resources”) as the criterion for determining patent eligibility.

In the JPO trial decision of this case, the JPO first presented a determination based on the aforementioned “comprehensive consideration standard”, and in addition, also presented a determination based on the “concrete realization using hardware resources standard”. Under Ground for Recission 1, the plaintiff specifically argued and contested that the latter “concrete realization using hardware resources standard” was also not satisfied.

In response to this framework of issues, the court in this judgment affirmed patent eligibility by finding that “it can be deemed that the software-driven information processing is concretely realized using hardware resources” after briefly identifying the problem and effects, without explicitly stating the “comprehensive consideration standard” evident in conventional judicial precedents.

While there do not necessarily appear to have been many conventional judicial precedents that placed the “concrete realization using hardware resources standard” directly at the forefront, this judgment serves as a useful practical reference in that it directly applied the “concrete realization using hardware resources standard” to affirm patent eligibility, albeit in accordance with the specific framework of the issues in dispute.

Mitsuaki KOBIKI