From April 2018, the Japan Patent Office (JPO) is carrying out examination of patent applications in accordance with the Examination Guidelines and the Examination Handbook which have been revised regarding "eligibility for a patent" and "inventive step" with respect to software related inventions.  Below is a summary of the revisions.

(1) Inventive Step of Artificial Intelligence (AI) Related Inventions
The JPO has added examples to the Examination Handbook in which artificial intelligence related inventions are deemed to have inventive step in the case that characteristics are given to input data for a neural network model.  In order to avoid inventive step being denied for the reason of "mere application of a publicly known neural network model", it is important that the specification is drafted in such a manner that technical effects that can be obtained by, for example, selection of input data, can be asserted.

(2) Lack of Inventive Step Due to Documents from Different Technical Fields
The JPO has added examples to the Examination Handbook in which inventive step is denied based on the citation of documents from different technical fields.  Further, the JPO notes in the Examination Handbook that Examiners should expand the scope of prior art searches to include technical fields other than the subject technical field.  Accordingly, it is anticipated that instances of patentability being denied based on the citation of documents from different technical fields will increase in the case that an applicant files an application based on the belief that there is no prior art in the same technical field as the subject technical field.  As a way of addressing this issue, we recommend describing improvements associated with specific circumstances in the subject technical field in the specification of the patent application.

(3) Addressing Rejections for Lack of Eligibility for a Patent
In the revisions to the Examination Handbook, the JPO emphasizes that the determination as to whether or not general eligibility for a patent is satisfied (i.e., a determination as to whether the invention is a "creation of a technical idea utilizing the laws of nature") is different to the determination as to whether or not eligibility for a patent is satisfied based on the standpoint of software (i.e., whether or not information processing by software is concretely realized by using hardware), and the types of invention that satisfy eligibility for a patent based on the standpoint of software have been clarified.  It is important to accurately understand whether assertions made by the Examiner in a reason for rejection pertain to general eligibility for a patent or to eligibility for a patent based on the standpoint of software.  In the case of the latter, it is also effective to amend claims so as to correspond to the types of invention that satisfy eligibility for a patent based on the standpoint of software indicated in the revised Examination Handbook.

 
Summary prepared by Chikako Kobayakawa, International Information Group
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