―IP High Court Case No. 2019 (Gyo-ke) 10085 of June 4, 2020 (Presiding Judge TSURUOKA)
1. An excerpt from the Judgment
When compared with the Present Invention, replenishment of a card in the Cited Invention…is different from that in the Present Invention in the destination of the card triggering replenishment and different in type and function of the card to be moved; therefore, Difference 6 is not a minor difference. Further, it can be said that the existence of Difference 6 makes the Cited Invention and the Present Invention considerably different from each other in their nature of game. Therefore, it is not appropriate to determine, without specifying the reasoning conducted by using known technology etc., that the invention in question could be easily conceived by a person skilled in the art because the constitution related to Difference 6 is “mere arrangement for a game”.
2. A modicum of consideration on this case
It is generally considered that mere “human-made arrangement” does not fall under a statutory invention (the main paragraph of Article 29, Paragraph 1 of the Patent Act). Even if hardware is interposed for an invention, when “the nature of the invention is exclusively directed to human-made arrangement itself”, the invention does not fall under a statutory invention (the recent IP High Court Case No. 2019 [Gyo-ke] 10110 of June 18, 2020; “METHOD FOR SETTLING ELECTRONICALLY RECORDED MONETARY CLAIMS AND MONETARY CLAIMS MANAGEMENT SERVER” Case [Presiding Judge TSURUOKA]).
A judgment on whether or not “the nature of the invention is exclusively directed to human-made arrangement itself” is made on a case-by-case basis. Nevertheless, with respect to inventions relating to games or amusement, the Japan Patent Office judges on whether or not such inventions fall under a statutory invention extremely flexibly, and thus there are many inventions which have been found to fall under a statutory invention only in Japan compared to global standpoints. In fact, after this case was referred back to the JPO for further proceedings, a decision to grant a patent for the invention in question was rendered without any further discussion on whether or not the invention in question falls under a statutory invention.
In the United States, the Supreme Court Decision in Alice v. CLS Bank Case rendered on June 19, 2014, found, as the “second step” of the framework for analyzing patent eligibility, that the claim needs to contain an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application, which needs to be significantly more than the abstract idea itself.
In Europe, requirements for the subject matter eligibility can be relatively easily met by specifying some hardware as technical measures in claims. However, any features which do not contribute to technical properties of an invention are not taken into account in comparison between a claimed invention and prior art when determining inventive step of the claimed invention.
Aside from the appropriateness of the JPO’s flexible judgment, it would be useful for patent practitioners to understand the tendencies of the JPO’s judgments in each technical field.
In this case, the Court found that “Difference 6 is not a minor difference. Further, it can be said that the existence of Difference 6 makes the Cited Invention and the Present Invention considerably different from each other in their nature of game.” However, said element is considered to have no relation to whether the invention in question falls under a statutory invention. At any rate, there is no error in judgment of this case because it is in connection with novelty and inventive step of the invention in question. If whether the invention in question falls under a statutory invention was presented for consideration, a different benchmark and judgment would be made.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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