What Exactly Does Japanese Patent Law Consider an 'Invention,' and How Does This Impact Software and Business Methods?

Japanese Attorney at Law - Bengoshi L.L.

• 7 min read

Understanding the precise definition of an "invention" under Japanese patent law is crucial for businesses operating in or seeking protection in Japan, particularly as technology evolves in areas like software and business methods. The Japanese Patent Act provides a foundational definition, but its application, especially concerning the "utilization of a law of nature," has been a subject of extensive interpretation and policy considerations.

The Core Definition of an Invention in Japan

Article 2, Paragraph 1 of the Japanese Patent Act defines an invention as "the highly advanced creation of technical ideas by which a law of nature is utilized." This definition comprises several key elements that must be satisfied for a creation to be considered a patentable invention:

  1. Creation of Technical Ideas: The invention must be a "technical idea." This distinguishes patentable inventions from mere artistic creations (which fall under copyright law) or aesthetic designs of articles (protected under design law, unless the article also exhibits a useful function). For instance, a novel tire tread pattern that only produces an aesthetic effect would not be a patentable invention; however, if that same tread pattern also provides a novel and improved water displacement function, it could qualify. The term "technical idea" also implies that the invention must be objective knowledge that can be communicated to and implemented by a third party, distinguishing it from personal skills or "knacks" that depend on individual proficiency.
  2. Utilization of a Law of Nature: This is a cornerstone of the Japanese definition and signifies that the invention must harness physical laws or the properties of natural substances. This requirement excludes creations that are purely man-made rules, mental processes, or abstract concepts.
  3. Highly Advanced (Kōdo-sei): While part of the statutory definition, this "highly advanced" requirement primarily serves to distinguish inventions under the Patent Act from "devices" under the Utility Model Act (which also requires the utilization of a law of nature but not necessarily a high degree of advancement). In practice, whether a creation meets the "highly advanced" criterion is rarely a contentious issue for patentability itself; applicants generally choose whether to file under the Patent Act or Utility Model Act.

Unpacking "Utilization of a Law of Nature"

The requirement for an invention to "utilize a law of nature" effectively filters out several categories of creations from patent eligibility:

  • Mental Processes: Purely mental acts or processes are not considered inventions. For example, a method for creating telegraphic codes using combinations of letters, symbols, and numbers was held not to be an invention under the previous patent law (Tokyo High Court, February 28, 1950; Supreme Court, April 30, 1953). Similarly, memory techniques, methods of product display, or sports and game rules, if they are solely the product of human mental activity, do not qualify. However, if an invention's essence lies in providing a technical means to support or replace human mental activity, it may be patentable even if it incorporates elements of human mental processes. A dental treatment support technology that functions based on a computer, for instance, was deemed patentable despite requiring human evaluation and judgment, as its overall aim was not directed at the mental activity itself (Intellectual Property High Court, June 24, 2008).
  • Mathematical Formulas and Economic Laws: Mathematical formulas, in the context of Japanese patent law interpretation, are considered products of human thought rather than direct descriptors of the natural world. Therefore, methods for analyzing mathematical problems or mere computational procedures based on mathematics are not seen as creations utilizing a law of nature (e.g., a circuit simulation method itself was found unpatentable, Tokyo High Court, December 21, 2004). Likewise, economic laws, which are specific to human society, are distinct from natural laws, and creations based solely on economic principles are not patentable inventions (e.g., a type of financial statement was deemed unpatentable as it solely utilized economic or accounting principles, Tokyo District Court, January 20, 2003).
  • Methods Relying Purely on Human Skill or Manual Labor: While human power undoubtedly involves chemical and electrical reactions within the body (natural laws), the simple use of human power is often viewed as a direct physical expression of human thought, not rising above the level of a mental process. An old case under the previous law denied patentability to an advertising method involving the periodic rotation of advertisement boards on multiple utility poles, as it relied only on simple human labor (Tokyo High Court, December 25, 1956). However, if a method, even one involving indispensable human effort, employs means utilizing a law of nature to solve a pre-existing technical problem, it can be considered an invention. For example, a method for looking up words in an English dictionary based on pronunciation even without knowing the spelling, which utilized a specific human cognitive ability (superior identification of consonants), was considered potentially patentable (Intellectual Property High Court, August 26, 2008). Similarly, a muscle training method involving restricting blood flow to muscles using a tightening tool to induce a physiological response (which is based on natural law) was also found to be potentially patentable (Intellectual Property High Court, August 28, 2013).
  • Creations Contrary to Natural Laws: Anything that contravenes established laws of nature cannot be an invention. The most prominent example is a perpetual motion machine – a device that operates continuously without external energy input. Despite numerous attempts and ideas, such machines are considered to violate thermodynamic laws. Consequently, any claim for a device purported to operate indefinitely without an energy source would be denied patentability for failing to utilize (and indeed, for contradicting) a law of nature.

The patentability of computer software has presented unique challenges to the "utilization of a law of nature" requirement. Software, at its core, can be seen as a set of instructions (an algorithm) for a computer, which might be argued to be more akin to a man-made arrangement or mathematical procedure than a direct utilization of natural law.

Initially, the Japan Patent Office (JPO) took a cautious approach, sometimes requiring a physical integration of the software with hardware. However, recognizing the immense industrial importance of software, a more flexible interpretation has evolved, driven by policy considerations. Today, physical integration with specific, novel hardware is not strictly necessary.

A significant development was the 2002 amendment to the Patent Act, which explicitly clarified that "programs, etc." can be protected as "product inventions" (Article 2, Paragraph 3, Item 1, parenthetical). A "program" is defined as a set of instructions given to a computer that can produce a certain result (Article 2, Paragraph 4, parenthetical). "Programs, etc." also includes information, other than programs, used for processing by a computer and equivalent to programs, such as genomic information or protein three-dimensional structure information, provided it can influence information processing within a computer.

For software to be patentable as an invention, its intended operational effects must be achieved through concrete cooperation with hardware resources. If this connection is missing, the software may be deemed a mere man-made rule or calculation method. For instance, a claim for "a computer that finds the minimum value of y in the formula y=F(x) where a≤x≤b" would likely be insufficient if it doesn't specify how the computer uses hardware resources to achieve this.

Conversely, software that does achieve its intended effect through such concrete cooperation with hardware can satisfy the "utilization of a law of nature" requirement. Crucially, the core technical idea or the essence of the invention does not need to reside in the hardware itself; the hardware can be general-purpose. This underscores the policy-driven nature of software patentability in Japan, where a somewhat relaxed interpretation of "utilization of a law of nature" is applied to foster innovation in this critical sector.

Software-related inventions can be claimed in various categories, including:

  • As a program itself (e.g., "A computer-readable recording medium storing a program for causing a computer to execute procedure A, procedure B, procedure C...").
  • As a computer executing the program.
  • As a computer-readable recording medium storing the program.
  • As an information processing method (a method invention).

The JPO's Examination Guidelines provide further detail on these claiming practices.

Business Method Inventions: Riding on Software's Coattails

Pure business methods, such as unique sales tactics or management strategies, are, in themselves, generally considered products of mental activity or economic principles and thus not patentable for failing to utilize a law of nature. The example of "Toyama's medicine peddlers" who used a "use first, pay later" model, or the business model of private railway companies developing surrounding areas (amusement parks, residential zones) to generate synergistic revenue, illustrate innovative business ideas that, on their own, would not meet the patentability criteria.

However, with the advancement of information technology, complex business methods can now be implemented through sophisticated combinations of computers and network equipment. When a business method is realized through such hardware resources, it can be viewed as a type of software-related invention and may become eligible for patent protection. This approach gained traction in Japan, particularly from the late 1990s, influenced in part by developments in the United States, such as the 1998 U.S. Federal Circuit Court of Appeals decision that significantly broadened the scope of patentable subject matter to include business methods (often associated with the State Street Bank case).

An example cited by the JPO of a patented business method invention in Japan is a system (Patent No. 2756483, often referred to as the "Mapion" patent) where advertisers can access a map information website, click on a building representing their store on the map, and record their advertisement linked to that location on a server. When an internet user subsequently clicks on that building on the map, the advertiser's content is displayed.

As with other software inventions, the core inventive concept in a business method patent does not need to lie in the novelty of the hardware used. The invention can reside in the way the information is processed and the business logic is implemented via that hardware. Thus, business method patents are essentially a subset of software patents, benefiting from the same policy-driven, flexible application of the "utilization of a law of nature" requirement.

The Ongoing Relevance of the "Utilization of a Law of Nature" Requirement

The evolving landscape of software-related inventions has sparked debate about whether the "utilization of a law of nature" requirement should be maintained in Japanese patent law. The United States Patent Act, for example, does not contain such an explicit requirement.

Indeed, for software inventions, this criterion has been significantly relaxed. Critics argue that diluting a requirement for specific fields of invention can undermine legal consistency and that the underlying technological view that only creations utilizing natural laws are truly "man-made" is outdated in an era of complex software.

However, the call to abolish this requirement has not gained majority support in Japan. Proponents of retaining it argue that:

  • Flexible interpretation is sufficient to accommodate evolving software inventions.
  • There is limited concrete demand for patenting purely abstract business methods or ideas.
  • The requirement serves as a crucial bulwark against patenting overly abstract ideas or arbitrary arrangements, preventing an unbounded expansion of patentable subject matter.

It's also noted that even in the U.S., the "useful, concrete, and tangible result" standard articulated in some case law (like the 1998 Federal Circuit decision mentioned earlier) acts as a similar check on the scope of patentable business methods.

In conclusion, while the Japanese Patent Act's definition of an "invention" hinges on the "utilization of a law of nature," a pragmatic and policy-oriented approach has allowed for the patenting of software and IT-implemented business methods. This is achieved by focusing on the concrete cooperation of software with hardware resources, thereby bridging the conceptual gap and fostering innovation in these vital technological and commercial domains. For businesses, this means that while purely abstract software algorithms or business schemes are unlikely to be patentable, their concrete, technically implemented embodiments often are, provided they meet other patentability criteria such as novelty and inventive step.