1. Subject Matter Eligibility -Interplay with Novelty/Inventive-step
September 27, 2018
Global Network Summit in Cancun
Kay Konishi
Co-chair of APAA Patents Committee

2. 1.1. “Eligibility” v. “Patentability”
Novelty/
Inventive-step
Technically, Eligibility and Novelty/Inventive-step are considered to be distinct and independent from each other
Eligibility functions as a “gatekeeper” or a “threshold” (In re Bilski) to prevent the public domain to be preempted

3. 1.2. Eligibility in Real World
Inventions directed to emerging technologies are likely to lack relevant prior art references
Inventions directed to emerging technologies thus need stronger gatekeeper
Consideration of prior art may assist the gatekeeper to be sstronger
Eligibility used to be mixed up with the “patentability” or “inventiveness” so as to heighten the threshold
Even now…

4. 1.3. Eligibility in Chaos
Current situation is…

5. 2.1. EP -History EPC Art. 52 enumerates non-patentable subject matters
“programs for computers”
“as such”
CII’s eligibility is a question of “computer program as such”
Eligibility standard has been relaxed
Old “technical contribution (to state of the art)” was overruled by IBM (T1173/97)
After HITACHI (T248/03) in 2004, “technical character” suffices
Claimed invention must pertain to a “technical field” and be directed to a “technical problem” (EPC Rule 42)
“Technical character” is found, as long as “technical means (e.g., general-purpose computer)” is claimed

6. Technical means claimed?
2.2. EP -At Present
Eligibility test is now simplified and easy to overcome
But, “Modified Problem-Solution approach” in the inventive-step test bars CII to be ultimately patented
Technical contribution to the prior art is now a matter of novelty/inventive-step
Inventive-Step Bar
Technical means claimed? Y
Eligible N
Non-eligible

7. 2.3. UK –Influential Aerotel Case
Aerotel Ltd v. Telco Holdings Ltd (2007)
Explicitly or implicitly referred to in 9 RG answers
To be eligible, a technical contribution to the prior art is required, i.e., claimed features must be new and involve inventive-step
Technical contribution to the prior art is a matter of eligibility
Four-step test under Aerotel
Properly construe the claim;
Identify the actual contribution;
Ask whether the identified contribution falls within the excluded subject matter; and
Check whether the actual or alleged contribution is actually technical in nature.

8. 2.4. US -History
35 USC §101 and judicially created non-statutory subject matters
Law of nature;
Natural phenomena; and
Abstract idea
CII’s eligibility is a question of “abstract idea”
Pendulum-like long history
Old “Freeman-Walter-Abele” test required “inventiveness”
“Practical application” test and “useful, concrete and tangible result” test (In re Alappat in 1994)
“Machine-or-transformation” test (In re Bilski in 2008)
Currently applicable “Abstract idea” test (Bilski in 2010)
Followed by Alice in 2013

9. Statutory category under §101?
2.5. US -At Present
Two-part test from Alice
Once “abstract idea” is found, the claimed invention is non-eligible, unless “significantly more” is demonstrated
S2A requires “specific implementation of solution to a technical problem” (Enfish, LLC v. Microsoft Corp)
S2B requires an “inventive concept” (Bascom v. AT&T) , which may be considered to be “contribution to the prior art”
Eligible N Y
S1:
Statutory category under §101?
S2A:
Abstract idea?
S2B:
“Significantly more”? Y Y N N
Non-eligible

10. 2.6. JP – Eligibility Test
Examination Guidelines exclusive to CII give clarification/ interpretation of “utilizing a law of nature” for CII
“whether the claimed invention concretely implements information processing by a software by using hardware resources” (e.g., CPU, memory, I/O devices…)
More specifically, “whether a specific calculation or processing of information directed to the intended use is assumed to be constructed by concrete means or processes on which software and hardware resources cooperate with each other”
“Utilizing law of nature” test has been relaxed to date

11. 2.7. JP -At Present
2nd step, exclusive to CIIs, applies only when the eligibility of CIIs cannot be prima facie determined by general criteria in 1st step
Eligibility of CIIs is “as a whole” question
Technical contribution to the prior art is now a matter of novelty/inventive-step
NO prior art reference is considered in eligibility test
Non-Eligible Y N
S1A:
Controlling physical equipment or information processing based of technical property of object?
S1B:
Human-conceive rule or mental activities?
S2:
Specific information processing by use of co-operative SW + HW? N N Y Y
Eligible

12. 3 hypo cases: CII, medical treatment, and gene-related
3.1. APAA Patents Committee Special Topic – Subject Matter Eligibility
3 hypo cases: CII, medical treatment, and gene-related
CII case: “Computer System for Predicting Daily Sales”
Determine First Prediction Value
Sales Data File
Read Variable Condition Data
FPV: Average
Chance of Rain
Correct FPV to calculate Second Prediction Value
Applying Correction Rules generated by neural network using the condition data
Output SPV

13. 3.2. Four Hypothetical Claims…
“An apparatus for predicting daily sales of various commodities comprising:
unit for determining a predicted value by correcting a daily sales records of the past several weeks, each data being of the same day of the week as that of the day of which daily sales is predicted, based on a variable condition rule.”
Claim 2:
unit for inputting the date for which daily sales are predicted;
unit for getting the first predicted value by calculating the average of sales records of the past several weeks, each data being of the same day of the week as that of the day of which daily sales is predicted;
unit for determining the second predicted value by correcting the first predicted value based on correction rules;
and unit for outputting the second predicted value.”

14. 3.2. Four Hypothetical Claims
“An apparatus for predicting daily sales of various commodities comprising:
　unit for inputting the date for which daily sales are predicted;
　sales data storage unit prepared for storing data representing actual daily sales records;
　variable condition rule storage unit prepared for storing data representing variable conditions;
　correction rule storage unit prepared for storing correction data;
　unit for getting the first predicted value by reading data representing daily sales records of the past several weeks, each data being of the same day of the week as that of the day of which daily sales is predicted, and calculating the average of said data;
　unit for reading variable condition data from the variable condition data storage unit, said variable condition data being related to the date for which daily sales of the commodities are predicted, and selecting correction rules to be applied based on said variable condition data, said correction rules being generated by a neural network of a correction rule unit;
　unit for determining the second predicted value by correcting the first predicted value based on said correction rule to be applied;
　and unit for outputting the second predicted value.”
Claim 4: Method claim comparable to Claim 3

15. 3.3. Three Diverse Approaches
EPC Approach: GE, ID, MC, PH, VT
UK Approach: US, AU, HK, IN, MY, NZ, PK, SG, TW, TH
JP-KR Approach: CN, JP, KR

16. 3.4. APAA RG’s Answers… SHEET 1 Software-related Invention (CII)
AU　 HK ID IN JP KR MC MY NZ PK PH SG SR TW TH VT
Criteria
technical contribution (RPL Central (2015))
technical contribution (UK Aerotel (2007))
technical effect and function
technical avdancement technical contribution (UK Aerotel)?
specific information processor w/cooperative HW+SW
technical means technical result
further technical effect technical contribution
technical contribution (UK Aerotel) Operating in new way (UK AT&T (2009))
technical contribution
technical solution technical effect
technical contribution (UK Aerotel) HW+SW to specific problem
solution to specific problem in the field of technology
technical effect technical contribution?
technical effect technical contribution
technical solution further technical effect
Exclusion
mere scheme plan abstract idea
computer program per se
mental activity human-conceived rule
rule/method generated by intellectual activity
mere scheme plan
none
scheme rule
mental activity human-conceived rule?
C1 Apparatus
Y/N N
Reasoning
mere scheme no technical contribution
mere automation non-technical limitation
no technical process to give technical effect
no specific information processor w/HW+SW
no technical means to form technical result
mere scheme no technical effect/ contribution
mere scheme no technical contribution
no technical effect
no HW+SW to specific problem
no problem in the field of technology
simple usage of computer no technical contribution
no further technical effect
C2 +I/O+1st PV Y
known computerized elements with known technical effects
technical advancement, if novel
no technical effect/ contribution
C3 +Storages+CL gen.
technical contribution, assuming combination is new
technical effect
technical character
specific information processor w/HW+SW
specific HW components for processing information w/HW+SW
technical effect/ contribution, as differently operated from P.A.
computer program per se, as no new features
technical contribution, assuming correction rule is contribution
HW+SW to specific problem
further technical effect
C4 Method
ditto
statutorily excluded business mechod

17. 3.4. APAA RG’s Answers… SHEET 2 Software-related Invention (CII) AU HKID IN JP KR MC MY NZ PK PH SG SR TW TH VT
Criteria
technical contribution (RPL Central (2015))
technical contribution (UK Aerotel (2007))
technical effect and function
technical avdancement technical contribution (UK Aerotel)?
specific information processor w/cooperative HW+SW
technical means technical result
further technical effect technical contribution
technical contribution (UK Aerotel) Operating in new way (UK AT&T (2009))
technical contribution
technical solution technical effect
technical contribution (UK Aerotel) HW+SW to specific problem
solution to specific problem in the field of technology
technical effect technical contribution?
technical effect technical contribution
technical solution further technical effect
Exclusion
mere scheme plan abstract idea
computer program per se
mental activity human-conceived rule
rule/method generated by intellectual activity
mere scheme plan
none
scheme rule
mental activity human-conceived rule?
C1 Apparatus
Y/N N
Reasoning
mere scheme no technical contribution
mere automation non-technical limitation
no technical process to give technical effect
no specific information processor w/HW+SW
no technical means to form technical result
mere scheme no technical effect/ contribution
mere scheme no technical contribution
no technical effect
no HW+SW to specific problem
no problem in the field of technology
simple usage of computer no technical contribution
no further technical effect
C2 +I/O+1st PV Y
known computerized elements with known technical effects
technical advancement, if novel
no technical effect/ contribution
C3 +Storages+CL gen.
technical contribution, assuming combination is new
technical effect
technical character
specific information processor w/HW+SW
specific HW components for processing information w/HW+SW
technical effect/ contribution, as differently operated from P.A.
computer program per se, as no new features
technical contribution, assuming correction rule is contribution
HW+SW to specific problem
further technical effect
C4 Method
ditto
statutorily excluded business mechod

18. What if Claim 3 is anticipated by prior art reference…?
3.4. APAA RG’s Answers
Software-related Invention (CII)
AU　 HK ID IN JP KR MC MY NZ PK PH SG SR TW TH VT
Criteria
technical contribution (RPL Central (2015))
technical contribution (UK Aerotel (2007))
technical effect and function
technical avdancement technical contribution (UK Aerotel)?
specific information processor w/cooperative HW+SW
technical means technical result
further technical effect technical contribution
technical contribution (UK Aerotel) Operating in new way (UK AT&T (2009))
technical contribution
technical solution technical effect
technical contribution (UK Aerotel) HW+SW to specific problem
solution to specific problem in the field of technology
technical effect technical contribution?
technical effect technical contribution
technical solution further technical effect
Exclusion
mere scheme plan abstract idea
computer program per se
mental activity human-conceived rule
rule/method generated by intellectual activity
mere scheme plan
none
scheme rule
mental activity human-conceived rule?
C1 Apparatus
Y/N N
Reasoning
mere scheme no technical contribution
mere automation non-technical limitation
no technical process to give technical effect
no specific information processor w/HW+SW
no technical means to form technical result
mere scheme no technical effect/ contribution
mere scheme no technical contribution
no technical effect
no HW+SW to specific problem
no problem in the field of technology
simple usage of computer no technical contribution
no further technical effect
C2 +I/O+1st PV
known computerized elements with known technical effects
technical advancement, if novel
no technical effect/ contribution
C3 +Storages+CL gen. Y
no technical contribution
technical character
specific information processor w/HW+SW
specific HW components for processing information w/HW+SW
computer program per se, as no new features
technical effect
further technical effect
C4 Method
ditto
statutorily excluded business mechod
What if Claim 3 is anticipated by prior art reference…?

19. AIPPI resolved that (excerpt):
4. Resolution on AIPPI 2017 Study Question on Patentability of Computer Implemented Invention (CII)
AIPPI resolved that (excerpt):
2) There should be no general exclusion from patentability of CIIs, including computer programs.
3) A claim directed to a CII should be eligible for paten protection if it defines an invention in at least one field of technology. A claim directed to a CII should be examined using the same criteria as applied to other kinds of inventions.
4) Eligibility of a CII for patent protection should not depend on determination of novelty or inventive step. Moreover, prior art should not be considered in determination of eligibility.
5) The assessment, including examination, of whether one or more claims directed to a CII define an invention in at least one field of technology should be made on a claim by claim basis, and in relation to each claim as a whole. (

20. The eligibility test should be clear, concise and predictable
5. Eligibility In Loco
The eligibility test should be clear, concise and predictable
Determining “the contribution to the prior art” in the eligibility test in the same way as the novelty/inventive-step test makes the patentability examination redundant
Determining “the contribution to the prior art” differently from novelty/inventive-step requirements makes the eligibility test subjective and unpredictable
Novelty/inventive-step examination using sufficiently accumulated prior art references may suffice to prevent an excessively abstract idea from being preempted.

21. Kay Konishi
KONISHI & NAGAOKA