Japan:
The most common rejecting reasons for computer software related applications filing in Japan are “violation against requirement for clarity” and “not using the nature law”.
(I) ★Regarding “violation against requirement for clarity”
☆According to Japan Patent Act 36.6.2, the writing of claims should meet the requirement for clarity.
※Determination of clarity:
(1) Basic principle:
Japan Patent Office (JPO) determines an application as not having clarity when the definitions of the application has technical result which is insufficient and which may cause non-clarity..
The technical content defining an invention cannot make persons of ordinary skill in the art comprehend. Even if the technical knowledge during filing is referenced, the specific definition is still obviously insufficient. Then the application is examined as non-clarity.
(2) Further principle:P
uld meet the requirement for clarity
Of course, if the scope of claims is clear, the application is clear for being understood by definition of the claims. However, in spite that the scope claiming in an application is clear, but the technical meaning in technical content defining an invention could not be comprehend even if technology during filing has been referenced, the technical content of the application is examined as being insufficient since its patent requirement such as the novelty and the inventive step cannot be precisely determined. In this situation, the functionality defined in claim which is necessary as an invention could not guarante to be fully controlled by one single claim. Accordingly, it violates the clarity.
If the technical connection between/among the technical content could not be found, the application is still be regarded as having non-clarity.
☆Example:
An information transmitting media which transmits a specific computer application.
Explanation: The information transmission is an inherent function of a transmitting media. The definition of “an information transmitting media which transmits a specific computer application” merely could be understood as some portion of the information transmitting media transmits a specific computer application during a specific time. The above definition merely defines a function inherent to an information transmitting media without explaining any relationship between the information transmitting media and the computer application.
(II) ★Regarding “not using the nature law”
☆According to 2.1.4 chapter 1 Part III of Japan Invention and Utility Model Examining Guideline, the requirement of “not using the nature law” is defined as: if a claim of application involves in human activity, e.g., game rules, the application is considered as not using the nature law and thus it does not belong to “an invention”.
※Tips for software related patent filing in Japan:
How to avoid the rejection reason of “violating the clarity requirement” and “not using the nature law”?
1. Claims should not only clearly defines the inventions, but also should be understood by a person of ordinary skill in the art. Moreover, there should have technical connection between the invention definitions.
2. It prefers to having software in conjunction with a hardware machine, rather than filing software itself or the software method alone, wherein the hardware machine should have its defined function other than a computer.
3. The function of the software is best to allow the machine to perform technical operations, rather than simply performing calculations and outputs based on human rules.
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