Subject Matter Eligibility Interplay with NoveltyInventivestep September 27

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

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

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

1. 3. Eligibility in Chaos u Current situation is… 4

2. 1. EP -History u EPC Art. 52 enumerates non-patentable subject matters u “programs for computers” u “as such” u CII’s eligibility is a question of “computer program as such” u Eligibility standard has been relaxed u Old “technical contribution (to state of the art)” was overruled by IBM (T 1173/97) u After HITACHI (T 248/03) in 2004, “technical character” suffices u Claimed invention must pertain to a “technical field” and be directed to a “technical problem” (EPC Rule 42) u “Technical character” is found, as long as “technical means (e. g. , general-purpose computer)” is claimed 5

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

2. 3. UK –Influential Aerotel Case u Aerotel Ltd v. Telco Holdings Ltd (2007) u Explicitly or implicitly referred to in 9 RG answers u To be eligible, a technical contribution to the prior art is required, i. e. , claimed features must be new and involve inventive-step u Technical contribution to the prior art is a matter of eligibility u Four-step test under Aerotel 1. Properly construe the claim; 2. Identify the actual contribution; 3. Ask whether the identified contribution falls within the excluded subject matter; and 4. Check whether the actual or alleged contribution is actually technical in nature. 7

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

2. 5. US -At Present u Two-part test from Alice u Once “abstract idea” is found, the claimed invention is noneligible, unless “significantly more” is demonstrated u S 2 A requires “specific implementation of solution to a technical problem” (Enfish, LLC v. Microsoft Corp) u S 2 B requires an “inventive concept” (Bascom v. AT&T) , which may be considered to be “contribution to the prior art” N S 1: Statutory category under § 101? N Y Y S 2 A: Abstract idea? Y Eligible S 2 B: “Significantly more”? N Noneligible 9

2. 6. JP – Eligibility Test u Examination Guidelines exclusive to CII give clarification/ interpretation of “utilizing a law of nature” for CII u “whether the claimed invention concretely implements information processing by a software by using hardware resources” (e. g. , CPU, memory, I/O devices…) u 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” u “Utilizing law of nature” test has been relaxed to date 10

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

3. 1. APAA Patents Committee 2016 -2017 Special Topic – Subject Matter Eligibility u 3 hypo cases: CII, medical treatment, and gene-related u 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 12

3. 2. Four Hypothetical Claims… u Claim 1: “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. ” u Claim 2: “An apparatus for predicting daily sales of various commodities comprising: 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. ” 13

3. 2. Four Hypothetical Claims u Claim 3: “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. ” u Claim 4: Method claim comparable to Claim 3 14

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 15

3. 4. APAA RG’s Answers… SHEET 1 Software-related Invention (CII) technical contribution (RPL Central (2015)) Criteria C 3 +Storages+CL gen. C 2 +I/O+1 st PV C 1 Apparatus Exclusion C 4 Method AU Y/N Reasoning ID IN technical avdancement technical effect contribution (UK technical and function Aerotel (2007)) contribution (UK Aerotel)? mere scheme plan abstract idea computer program per se N N N Reasoning mere scheme no technical contribution Y/N Y N N technical contribution, assuming technical effect combination is new specific information processor w/cooperative HW+SW KR specific information processor w/cooperative HW+SW N N no specific information processor w/HW+SW Y N N technical advancement, if novel no specific information processor w/HW+SW Y Y technical character technical advancement, if novel specific information processor w/HW+SW N known computerized no technical elements with process to give known technical effects Y JP mental activity computer program human-conceived program per se rule N mere scheme mere automation no technical computer program no technical non-technical process to give per se contribution limitation technical effect Y/N Reasoning HK MC technical means technical result rule/method generated by intellectual activity N MY further technical effect technical contribution NZ technical contribution (UK Aerotel) Operating in new way (UK AT&T (2009)) computer program per se N N no technical mere scheme computer program means to form no technical effect/ per se technical result contribution N N N no technical effect/ computer program means to form contribution per se technical result Y Y N PK technical contribution PH SG technical contribution (UK solution Aerotel) technical effect HW+SW to specific problem SR TW TH solution to technical effect specific problem technical in the field of contribution? contribution technology VT technical solution further technical effect mental activity computer humanprogram per se conceived rule? mere scheme plan computer program per se none scheme rule N N N N no technical effect no further technical effect 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 N N N N 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 technical effect no further technical effect Y Y Y N Y Y Y technical contribution technical effect further technical effect specific HW technical effect/ components for computer program contribution, no problem in contribution, as HW+SW to processing per se, as no new assuming technical effect the field of differently operated specific problem information features correction rule is technology from P. A. w/HW+SW contribution Y/N Y Y Y Y N Y Y Y Reasoning ditto statutorily excluded business mechod ditto ditto ditto 16

3. 4. APAA RG’s Answers… SHEET 2 Software-related Invention (CII) C 2 +I/O+1 st PV C 1 Apparatus Exclusion C 3 +Storages+CL gen. HK ID technical effect contribution (RPL contribution (UK and function Central (2015)) Aerotel (2007)) Criteria C 4 Method AU mere scheme plan abstract idea IN technical avdancement technical contribution (UK Aerotel)? JP specific information processor w/cooperative HW+SW KR specific information processor w/cooperative HW+SW MC technical means technical result mental activity rule/method computer program human-conceived generated by per se rule intellectual activity further technical effect technical contribution NZ technical contribution (UK Aerotel) Operating in new way (UK AT&T (2009)) PK technical contribution PH SG technical contribution (UK technical solution Aerotel) technical effect HW+SW to specific problem mere scheme plan computer program per se none scheme rule N N N mere scheme no technical contribution no technical effect Y Y N N N Reasoning mere scheme no technical contribution mere automation non-technical limitation no technical process to give technical effect computer program per se no specific information processor w/HW+SW Y/N N Y N N Reasoning mere scheme no technical contribution known computerized elements with known technical effects no technical process to give technical effect technical advancement, if novel no specific information processor w/HW+SW Y/N Y Y Y Y N Reasoning technical contribution, assuming combination is new 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 Y/N Y Y Y Y N Y Y Y Reasoning ditto statutorily excluded business mechod ditto ditto no technical means mere scheme computer program to form technical no technical effect/ per se result contribution N N no technical means no technical effect/ computer program to form technical contribution per se result technical contribution, assuming technical effect correction rule is contribution technical effect technical contribution VT technical solution further technical effect mental activity computer program human-conceived per se rule? N N simple usage of computer no technical contribution no technical effect no further technical effect N N N simple usage of computer no technical contribution no technical effect no further technical effect Y Y Y technical contribution technical effect further technical effect N Y Y Y ditto N no HW+SW to no problem in the specific problem field of technology Y TH N no HW+SW to no problem in the specific problem field of technology N TW solution to technical effect specific problem technical in the field of contribution? technology computer program per se N N SR computer program per se Y/N technical effect technical character advancement, if novel N MY N HW+SW to no problem in the specific problem field of technology 17

3. 4. APAA RG’s Answers Software-related Invention (CII) C 2 +I/O+1 st PV C 1 Apparatus Exclusion C 3 +Storages+CL gen. HK ID IN technical avdancement technical effect and contribution (RPL contribution (UK technical function Central (2015)) Aerotel (2007)) contribution (UK Aerotel)? Criteria C 4 Method AU Y/N JP specific information processor w/cooperative HW+SW KR specific information processor w/cooperative HW+SW MC technical means technical result MY NZ PK technical contribution (UK further technical Aerotel) technical effect Operating in new contribution technical contribution way (UK AT&T (2009)) PH SG technical contribution (UK technical solution Aerotel) technical effect HW+SW to specific problem y b d e t a p i c i t n a s i ? 3 … e m c i n a l e r C fe f i e t r a t h r W or a pri mere scheme plan abstract idea N computer program per se N N mental activity rule/method computer program human-conceived generated by per se rule intellectual activity N N N no specific information processor w/HW+SW N N N technical advancement, if novel no specific information processor w/HW+SW mere automation no technical process computer program non-technical to give technical per se limitation effect N computer program per se N Reasoning mere scheme no technical contribution Y/N N N Y Y Y N Reasoning no technical contribution technical character no technical contribution specific information processor w/HW+SW specific HW components for processing information w/HW+SW Y/N N N Y Y Reasoning ditto statutorily excluded business mechod ditto N N known computerized no technical process elements with to give technical known technical effects N mere scheme no technical means to computer program no technical effect/ form technical result per se contribution SR TW solution to technical effect specific problem technical in the field of contribution? technology mere scheme plan computer program per se none scheme rule N N TH technical effect technical contribution VT technical solution further technical effect mental activity computer program human-conceived per se rule? N N N no technical effect no further technical effect N N N simple usage of computer no technical contribution no technical effect no further technical effect simple usage of no HW+SW to no problem in the computer specific problem field of technology no technical contribution mere scheme no technical contribution no technical effect N N Y no technical contribution computer program per se, as no new features no technical contribution technical effect no technical contribution no problem in the field of technology no technical contribution further technical effect Y N N N N Y ditto ditto ditto N N N no technical means to no technical effect/ computer program form technical result contribution per se N N no HW+SW to no problem in the specific problem field of technology 18

4. Resolution on AIPPI 2017 Study Question on Patentability of Computer Implemented Invention (CII) u 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. (http: //aippi. org/committee/patentabililty-of-computer-implemented-inventions/) 19

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

Kay Konishi KONISHI & NAGAOKA kkonishi@konishinagaoka. com 21