Why is a program claim necessary?

Author:

Tad Itoh Jr, ITOH International Patent Office, Tokyo

In Japan, unlike the US, Europe, South Korea, China, and other countries, program claims are permissible. However, a lot of foreign patent practitioners do not understand their values beyond the method, apparatus, and computer program product claims that are permissible in a lot of countries. For example, we have often received the question, "if apparatus, method and computer program product claims have already been drafted, should we add program claims for Japanese patent applications?"

The answer is yes.

1. Japanese Patent Law and Examination Guidelines

Japanese Patent Law Article 2(3) categorises "invention" and defines the meaning of "work" as follows.

Article 2 Definitions

(3) "Working" of an invention in this Law means the following acts:

(i) in the case of an invention of a product (including a program, etc – hereinafter the same), acts of manufacturing, using, assigning, etc, (meaning assigning and leasing; and including, where the product is a program, etc, its being provided through electric telecommunication lines), or importing or offering for assignment, etc, (including displaying for the purpose of assignment or lease – hereinafter the same) the product;

(ii) in the case of an invention of a process, acts of using the process;

(iii) in the case of an invention of a process of manufacturing a product, acts of using, assigning, leasing, importing or offering for assignment or lease of, the product manufactured by the process, in addition to the acts mentioned in the preceding paragraph.

(4) "Programs, etc" in this law means programs (a set or sets of instructions to a computer which are combined so as to produce a result) and other information equivalent to programs to be used for computer processing.

Furthermore, Chapter 1 "Computer Software Related Invention" of Part VII "Examination Guidelines For Inventions in Specific Fields" of Japanese Examination Guidelines for Patent and Utility Model lists examples of the program claim as follows.

• "A program which makes a computer execute procedure A, procedure B, procedure C, ..."
• "A program which makes a computer operate procedure A, procedure B, procedure C, ..."
• "A program which makes a computer realise function A, function B, function C, ..."

In addition, Japanese Patent Law Article 68 states as follows.

Article 68 Effects of patent right

A patentee shall have an exclusive right to commercially work the patented invention. However, where the patent right is the subject of an exclusive licence, this provision shall not apply to the extent that the exclusive licensee exclusively possesses the right to work the patented invention.

Therefore, if a third party commercially works the patent invention without any authority from the patentee, this third party's activity would likely be patent infringement.

2. Infringement Issue

According to the above-mentioned articles, even if the program is not recorded in a recordable medium, the program per se is subject matter of the patent. In addition, the definition of "work" includes providing the program through an electric telecommunication line such as a network.

Therefore, in a case where a third party provides the program not by a recordable medium but through a network such as the Internet, if there is no program claim in the patent, the patentee cannot enforce the patent against this third party. In this case, the third party's activity is not in the scope of inventions of an apparatus claim, method claim, or recordable medium claim.

In a case where a third party uses the program obtained not by a recordable medium but through a network such as the Internet, if there is a program claim, the patentee can enforce the patent against this third party.

If a third party commercially copies, irrespective of the way of copying, a program protected by a patent right, this third party's activity corresponds to "manufacturing the product" as stated in Article 2(3) and therefore forms a patent infringement. In this case, if there is no program claim but there is a recordable medium claim, it is required to prove the existence of the medium on which the program has been copied for asserting patent infringement.

The Japanese Patent Office states that although the "electric telecommunication lines" stated in the Article 2(3)(i) means a so-called a two-way communication medium, an activity of sending a program through wireless transmission which is a one-way communication is included in the meaning of "assigning and leasing" stated in Article 2(3)(i). However, in the case of a recordable medium claim, there is not this effect.

3. Conclusion

Thus, even if apparatus, method and computer program product claims have already been drafted in an original application, we recommend instructing Japanese associates to add "program claims" for a corresponding Japanese patent application. This way patent protection of the computer program related invention is strengthened.

Copyright 2004. 8.31 Itoh International Patent Office