A report titled “Comparative Study on Computer Implemented Inventions/ Software Related Inventions
” jointly prepared by the EPO and the JPO was published in November 2021. This is a relatively new report on the examination of software-related inventions in the two patent offices. The report not only describes differences in laws and regulations between the two patent offices, but also lists example cases of examination performed on the same software-related inventions by the two patent offices’ standards. The report clarifies differences in patent requirements for software-related inventions between the two patent offices, and provides information useful to patent practitioners. Thus, in this newsletter, we would like to briefly introduce you to the contents of the report.
2. Comparison of laws, regulations, and examination guidelines
The report mainly compares laws, regulations, and examination guidelines in the EPO and the JPO regarding invention eligibility, novelty, an inventive step, and sufficiency of disclosure/ enablement requirement, for software-related inventions. Differences between the two patent offices will be briefly described below focusing on invention eligibility and an inventive step.
(1) Invention eligibility
The European Patent Convention (EPC) does not define what constitutes an invention; however, Guidelines for Examination in the European Patent Office (EPO Guidelines) G-II, 3, and its subsections describe that inventions involving programs for computers can be protected as “computer-implemented inventions”.
That is, a claim to a computer program is not excluded from patentability by the provisions of Article 52(2) and (3) EPC if it is capable of bringing about, when running on a computer, a further technical effect going beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run. The same applies to claims to computer-implemented methods, and computer-readable storage medium or device. Further, data formats and/or data structures embodied on a medium or on an electromagnetic carrier wave also can be considered to be inventions within the meaning of Article 52(1) EPC.
On the other hand, Japan Patent Act defines an invention as “the highly advanced creation of technical ideas utilizing the laws of nature” (Article 2(1)). The JPO assesses whether a claimed software-related invention constitutes an “invention” via up to two steps.
In the first step, it is reviewed whether the claimed software-related invention is a “creation of technical ideas utilizing the laws of nature” based on Examination Guidelines for Patent and Utility Model in Japan (JP Guidelines), Part III, Chapter 1. Specifically, the claimed software-related invention is regarded as a statutory “invention” if it concretely performs control of an apparatus or processing associated with the control, or if it concretely performs information processing based on the technical properties of an object.
In the case where determination on whether to constitute an invention is not made in the first step, this approach proceeds to the second step. In the second step, it is determined whether the information processing by software is concretely implemented using hardware resources, based on Examination Handbook for Patent and Utility Model in Japan (JPHB), Annex B, Chapter 1. Specifically, the examiner determines, based on the statement of the claims, whether specific calculation or processing of information according to the intended use is implemented by specific means or procedures on which software and hardware resources co-operate. If it is determined that the information processing by software is concretely implemented using hardware resources, the claimed software-related invention constitutes a statutory “invention”.
“Structured data” or a “data structure” is determined to be software when it is equivalent to a program, and its invention eligibility is determined through the above-described approach.
(2) Inventive step
According to EPO Guidelines G-VII, 5.4, in order for the presence of an inventive step to be acknowledged in the examination in the EPO, a software-related invention is required to have a non-obvious technical solution to a technical problem. In other words, the presence of an inventive step is not acknowledged if the differences from the closest prior art do not make any technical contribution in the software-related invention. By contrast, if the differences include features making a technical contribution, the objective technical problem is formulated on the basis of the technical effects achieved by these features, and an inventive step in the claimed software-related invention is assessed based on whether the claimed technical solution to the objective technical problem is obvious to the person skilled in the art.
On the other hand, the JPO assesses an inventive step based on whether a reasoning is possible that the person skilled in the art would easily arrive at the claimed invention starting from the primary prior art. The JPO does not distinguish a technical feature from a non-technical feature also in assessing an inventive step of software-related inventions (JP Guidelines Part III, Chapter 2, Section 3).
3. Comparative study on example cases
In this comparative study, some cases of examination for invention eligibility, novelty, and an inventive step listed in current JPHB are examined by the EPO’s standards, and some similar cases listed in current EPO Guidelines are examined by the JPO’s standards. The results of the examination of the same cases by the two patent offices’ standards are shown for invention eligibility, novelty, and an inventive step.
According to the results of the examination of the same cases in the report, invention eligibility of software-related inventions appears to be more likely to be acknowledged by the EPO than by the JPO, although the difference therebetween is slight. However, the report shows that the number of cases in which the presence of an inventive step is acknowledged in the EPO is considerably smaller than in the JPO, and thus, an inventive step appears to be less likely to be acknowledged in the EPO than in the JPO. Such a difference in assessing an inventive step appears to result in higher grant rate of software-related inventions in the JPO than in the EPO, which is consistent with what we feel in everyday patent practice.
The differences in the examination between the EPO and the JPO are conspicuous in business model inventions and in AI-related inventions. Since the EPO assesses an inventive step only by technical features, an invention whose feature is only non-technical automation of tasks and that has no technical feature, such as a business model invention, is determined not to conform to inventive step requirements without being compared with prior art or without reviewed in terms of sufficiency of disclosure. Moreover, the EPO regards a neural network itself as non-technical, and thus, the presence of an inventive step in an invention whose feature is only that of a neural network and that has no other technical feature is not acknowledged. Furthermore, a learning model used in a neural network is deemed not to constitute an invention.
On the other hand, the JPO examiners should consider every matter recited in the claims in assessing an inventive step and should not handle it as if it is not recited (JP Guidelines Part III, Chapter 2, Section 3). Thus, an inventive step is assessed in consideration of a non-technical feature too, and such a feature may become a decisive factor in acknowledgment of the existence of an inventive step in some cases. Accordingly, even a business model invention is patentable if computer processing is recited in the claims with some concreteness. Moreover, the JPO acknowledges invention eligibility even in an invention that only has a feature of a neural network itself, and also may acknowledge the existence of an inventive step. Furthermore, a learning model used in a neural network is also deemed to constitute an invention, and the existence of an inventive step also may be acknowledged.
In the meantime, an invention of a data structure is patentable both in the EPO and the JPO. This can be said to be a notable similarity in the examination in the two patent offices.
We do hope that you will refer to the report when filing applications for software-related inventions with the EPO and/or the JPO.