The Japan Patent Office has adopted the following measures in order to augment and clarify its approach to inventions related to the Internet of Things (IoT).
 
(1) Addition to the Examination Handbook of examination case studies concerning IoT-related technology and the like (March 22, 2017)

(2) Establishment (November 2016) of patent classification codes enabling prior art searches for IoT-related technology across technical fields, and subsequent refinement thereof (April 2017)

(3) Establishment of an IoT Examination Team composed of an IoT Committee and IoT Examiners (April 24, 2017)

Here, we discuss the first of these measures, which is particularly pertinent to actual IP practice. The addition to the Examination Handbook of examination case studies on IoT-related technology and the like includes the addition of case studies concerning AI-related technology and 3D printing-related technology, in addition to those concerning IoT-related technology. Specifically, case studies concerning evaluation of eligibility as an invention and case studies concerning evaluation of inventive step have been added to Annexes A and B of the Examination Handbook.

(i) Regarding evaluation of eligibility as an invention As regards the process of determining whether or not a "data structure" or "data having a structure" qualifies as "an invention" (i.e., whether the claimed subject matter corresponds to the "creation of a technical idea utilizing a law of nature"), specific case studies that consider whether or not an invention corresponds to "a program or the like" (i.e., is equivalent to a program) as stipulated by Article 2(3)(i) of the Patent Law, have been added to the Examination Handbook (Annex B, Chapter 1, Case Studies 2-11, 2-12, 2-13 and 2-15).

According to these case studies, when the intended invention has similar properties to a program in terms of claiming a structure (of "data having a structure") that specifies information processing to be performed by a computer, even if the claimed subject matter is a "data structure" or "data having a structure", eligibility as an invention is affirmed because the invention is deemed to correspond to "a program or the like". However, claimed subject matter that simply presents information and is only characterized by the content of the information does not qualify as "an invention" (Annex A, Case Studies 3-2 and 3-3). While these examination guidelines are not new and have previously been applied, the new addition of specific case studies has provided clearer and more detailed guidelines for applicants. Specifically, case studies have been provided that clarify that claimed subject matter qualifies as an invention in a case in which a claim recites "data having a structure used in processing that…" or "a data structure used in processing that…", and also recites the precise content of information processing by hardware.

Further, a case study has been added in which, despite the fact that the preamble recites a "trained model" that is not a program, the claimed subject matter was deemed to qualify as "an invention" of "a program" (Examination Handbook, Annex B, Chapter 1, Case Study 2-14). According to this case study, in view of the fact that the detailed description of the invention includes descriptions such as "[t]he trained model is supposed to be utilized as a program module which constitutes a part of artificial intelligence software", it was determined that the intended invention was clearly "a program" despite the recitation of a "model" in the preamble. This is a case study in which the claimed subject matter was viewed simply as "a program" rather than as "a program or the like".

(ii) Regarding evaluation of inventive step
The new case studies pertaining to evaluation of inventive step provide detailed examples of Notices of Reasons for Rejection and responses thereto.

In two of these case studies, in the case of a claim reciting "data (having a structure) used in processing that …", when responding to a Notice of Reasons for Rejection by asserting differences over cited prior art, assertions regarding differences in the content of the processing, rather than differences in the content of the data, were accepted by the Examiner and the invention was deemed to have inventive step (Annex B, Case Studies 3-4 and 3-5).

In a further example, in the case of a claim reciting "training a neural network by means of deep learning", a rejection stating that this recitation constituted a well-known technique was countered by an amendment further limiting this recitation, as a result of which the inventive step rejection was overcome (Annex A, Case Study 32).

An English translation of the entire Examination Handbook can be accessed via the following URL:
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/handbook_sinsa_e.htm

While the cases studies on IoT related technology and the like have been divided between Annexes A and B of the Examination Handbook, a compilation of all of the case studies pertinent to IoT related technology and the like in Annexes A and B can be found at the following URL:
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/files_handbook_sinsa_e/app_z_e.pdf

 
Summary prepared by International Information Group
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