In Japanese Patent Act, the term “invention” is defined as “highly advanced creation of technical ideas utilizing the laws of nature” (Patent Act Article 2(1)). That is, any invention that does not correspond to the defined term of “invention” should not be granted a patent.

Examination Guidelines for Patent and Utility Model in Japan set forth the following items (i) to (vi) as categories not corresponding to “creation of technical ideas utilizing the laws of nature” and therefore not falling under the invention (Examination Guidelines for Patent and Utility Model Part III, Chapter 1, entitled “2. Determination on Requirements of Eligibility for Patent”):

(i) they are the laws of nature themselves;

(ii) they are mere discoveries and not creation;

(iii) they are contrary to the laws of nature;

(iv) they do not utilize the laws of nature;

(v) they are not regarded as technical ideas

(vi) it is clearly impossible to solve the problem of the invention by any means disclosed to solve the same.

The Examination Guidelines further set forth the following items (i) to (iv) as examples not to use the laws of nature:

(i) any laws different from the laws of nature (e.g., economic laws);

(ii) man-made arrangements (e.g., rules themselves for playing games);

(iii) mathematical formula

(iv) mental activities of humans

(v) those utilizing only the above items (i) to (iv) (e.g., methods themselves for running a business).

 

The court case to be introduced in this article is a case where invention eligibility, etc. were questioned in the invention entitled “An analysis method for a haircut technique”, which we consider to be important in patent practice in Japan.

 

 

 

This case is a suit for seeking rescission of the Trial Decision issued in the patent application related to “An analysis method for a haircut technique” (Japanese Patent Application No. JP2019-160189). The Intellectual Property High Court (hereinafter, simply referred to as “IP High Court”) has dismissed the request for rescission of the Trial Decision for the reason that the subject invention does not comply with invention eligibility.

 

 

 

The Claims amended along with a request for filing an appeal consists of amended claims 1 to 9. The amended claim 1 (hereinafter, referred to as “amended invention”) recites as follows.

1. An analysis method for a haircut technique adopted to a section selected, the method comprising:

a first step of estimating a natural straight hairstyle of an analysis target in a naturally dried state as viewed from the front, the sides, and the back based on a photograph, an image, an illustration, or a drawing of the analysis target;

a subsequent step, which is a second step of selecting an analysis target section from sections;

a subsequent step, which is a third step including:

analyzing the analysis target section selected in the second step in respect of at least one analysis item, suitable for the analysis target section selected, among analysis items A to G based on the natural straight hairstyle in the naturally dried state estimated in the first step, the analysis items including:

A. an analysis on an outline formation or an expression;

B. an analysis on a cutting line;

C. an analysis on a hair volume position or a hair volume line;

D. an analysis on an outline shape or an expression;

E. an analysis on a position of a hair part or presence of the hair part;

F. an analysis on a section width or a section shape; and

G. an analysis on how the face line and the sections are joined, or how the sections are joined; and

obtaining an analysis result; and

a subsequent step, which is a fourth step of obtaining information on the haircut technique based on the analysis result.

 

 

 

A patent system grants a person who has made his/her an invention, i.e., a novel technique available to the public an exclusive right called a patent right for a certain period of time under a certain condition in exchange for the publication. On the other hand, the patent system provides the third party with an opportunity to utilize the invention made available to the public. Patent Act aims to encourage inventions by promoting protection and utilization of the inventions, to thereby contribute to development of industry (Patent Act Article 1).

Furthermore, the “invention” to be patented means “highly advanced creation of technical ideas utilizing the laws of nature” (Patent Act Article 2(1)), and is completed through steps of setting a certain technical problem, employing a technical means for solving the problem, and confirming the effect that the technical means can achieve a desired object.

In view of the foregoing, whether a claimed invention for which a patent is solicited falls under the “invention” set forth in Patent Act Article 2(1) should be determined based on whether the claimed invention as a whole is “creation of technical ideas utilizing the laws of nature” in light of technical significance such as a technical problem presupposed, a configuration of the technical means for solving the problem, and an effect to be brought by the configuration.

As stated above, considering that the “invention” is “creation of technical ideas utilizing the laws of nature”, mere mental activities of humans, decision-making, abstract ideas, and man-made arrangements cannot be immediately said to “utilize the laws of nature” because these activities neither correspond to nor utilize the laws of nature.

Therefore, even when the claimed invention for which a patent is solicited presents a certain technical means, such an invention cannot be said to be the “invention” set forth in Patent Act Article 2(1) if the invention is, in its problem-solving, directed exclusively to mental activities of humans, decision-making, abstract ideas, man-made arrangements themselves, and cannot therefore be said to “utilize the laws of nature” when the invention as a whole is considered in light of its technical significance.

 

 

 

The amended invention comprises the followings steps performed by an analyst:

estimating a naturally dried hairstyle by utilizing analyst’s knowledge, etc. of hair (first step);

selecting a head section to be analyzed (second step);

determining a classification of the hairstyle of the analysis target estimated by the analyst from among classification items suitable for the section (third step); and

deriving the haircut technique corresponding to the classification item (fourth step).

When the first through fourth steps are considered as a whole, it is found that the amended invention includes performing all these steps in the mind of the analyst. Thus, even if the laws of nature are included in knowledges and experiences of the hair utilized during the analysis performed in the mind of the analyst, the amended invention is an invention whose invention-specifying matters include solving the problem exclusively through mental activities and does not therefore correspond to “creation of technical ideas utilizing the laws of nature”. Accordingly, the amended invention is not the “invention” set forth in Patent Act Article 2(1).

 

 

 

●The Plaintiff has argued that when a knowledge related to the laws of nature is utilized during the steps of analysis, which are the invention-specifying matters, such steps of analysis correspond to the invention regardless of whether they are performed by humans. However, it cannot be said that the laws of nature are utilized when merely a knowledge related to the laws of nature is utilized in performing an analysis in the one’s mind.

 

●For invention eligibility to be acknowledged, claims must include a limitation of a specific technical means, and an effect to be brought by the technical means must contribute to solution of the problem to be solved by the invention.

 

●The major reason for denial of invention eligibility of the amended invention can be found in the IP High Court’s acknowledgement that the amended invention includes “performing all the first through fourth steps of claims in the (one’s) mind”. In order for the subject invention to be acknowledged as an invention “utilizing the laws of nature” for the purpose of compliance with invention eligibility, it would have been necessary to specify invention-specifying matters that each step of the analysis method for a haircut technique is performed by, for example, a computer. Moreover, it would have been necessary to sufficiently disclose, in the Specification, an embodiment in which the subject to perform each step is a computer.

 

 

Edited by Seiji Kimura