At the outset, let’s make clear this blog post will be more academic than practical. Still, the explanation might (i) help practitioners understand reasons behind certain US Patent and Trademark Office (USPTO) rejections, (ii) provide a frame of reference for addressing Examiner concerns, and (iii) aid practitioners in evaluating options with their clients.
When a Japan-origin, software-related patent application is examined at the USPTO, Applicants often are surprised at how their claims have been examined. Of course, there are some clear differences in law, such as a computer program being accepted by the Japan Patent Office (JPO) but considered non-statutory subject matter in the USPTO. MPEP 2106.03 I.
A Japanese friend recently shared information related to a more nuanced issue. Annex B of the Japan Patent Office’s Patent Examination Handbook includes, in Chapter 1, a discussion of Computer Software Related Inventions. (https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/tukujitu_kijun/document/tukujitu_kijun_0930/7_1.pdf, last visited: 31 December 2022). In this Chapter, 1.2.1.1 defines two categories of software-related inventions, in which the second category is an “invention of a product.” According to the JPO’s translation, “When a software-related invention can be expressed by a plurality of functions the invention serves, an applicant can state the software-related invention in the claims as an ‘invention of a product’ which is identified by the functions.”
In the US, a so-called “invention of a product” often is set forth as a computer-readable medium or an apparatus. Of course, an American computer-readable medium claim corresponds to a Japanese computer readable recording medium. (For example, as we discussed in Patent Terminology, Session 8.) The Japanese counterpart to an American apparatus claim seems to have no official name: the Handbook mentions a “product (system),” so we’ll use the phrase “system.”
The Japanese identification of system inventions only by their functions fundamentally differs from the American approach. Specifically, the American approach tends to view software-related inventions as improvements to hardware, rather than as improvements to the programming alone.
For example, the USPTO encourages Applicants to recite the elements of their software-related inventions structurally, as with any other system. Accordingly, the USPTO often challenges Applicants who define their systems using non-structural elements like “distributed learning control module.” One such challenge can come in the form of a rejection of the claim under 35 USC 101 as being directed to “software per se.” MPEP 2106.03 I.
Further, such non-structural elements are defined solely by their function. Of course, the USPTO is obligated to accept elements for performing a specified function without the recital of structure. 35 USC 112(f). However, the USPTO has heightened standards for establishing the definiteness of such an element. MPEP 2181 II B. These challenges are raised under 35 USC 112(b).
The USPTO will sometimes allow Applicants to overcome such rejections by reciting structural elements, like “a processor,” rather than as the aforementioned non-structural elements.
Further, the USPTO also does not favorably consider system claims in which the relationships between the functions of the elements are only loosely recited. The USPTO often relies on rejections under 35 USC 102 or 35 USC 103 in such a situation.
Thus, the JPO and the USPTO both acknowledge the special circumstances surrounding software-related inventions. The JPO seems to view such inventions as innovations in software, transcending the implementing hardware. In contrast, the USPTO seems to view such inventions as narrow innovations within the implementing hardware.
With thanks to H.Y.