Japan IP News

Clarification of the working of an invention

Content of Revision

New Article 2, Paragraph 3 of the Patent Law stipulates as follows:
In the case of an invention of a product (including a program and the like hereinafter the same), acts of manufacturing, using, assigning, and the like 　(meaning assignment and leasing, and if the product is a program, including providing the program through electrical telecommunication lines-hereinafter the same) or importing or offering for assigning and the like (including displaying for the purpose of assigning and the like-hereinafter the same) of the product.

New Article 2, Paragraph 4 of the Patent Law stipulates as follows:
"Program and the like" in the Patent Law means a program (instructions to a computer that are so combined as to produce a single result-hereinafter the　same) and other kinds of information which are used in the processing by a computer and which are equivalent to the program.

Reasons

The Patent Law defines the "working" of an invention as meaning certain acts in the case of a product invention and a method invention in order to make clear the scope of the protection provided by the patent right (Article 2, Paragraph 3). The Patent Law specifically defines the content of such acts constituting "working", namely, "manufacturing", "using", "assigning", "leasing", "importing" and the like (Article 2, Paragraph 3).
However, a "product" is generally considered to be a "tangible" product and thus it has not been always clear whether or not a "program" can be protected as a product under the Patent Law.
In addition, when a computer program is provided by a provider via a network or when a program is provided by an application service provider, ASP, the original program is usually retained by the provider or the ASP. In such case, it has not always been clear whether or not the providing of the program can be considered to be the working of an invention, especially, "assigning" or "leasing" of the program.
To eliminate the ambiguity concerning the working of an invention, the Patent Law has been amended so that a program can now be protected as a "product" and the providing of a program through electrical telecommunication lines can be considered to be "assigning" or "leasing" of the product.

Example

According to the amended Patent Law, the following acts are considered to be "working" of an invention.
・Act of downloading a program
・Act of using a program provided by the ASP via the Internet and receiving
the result

Therefore, an unauthorized person who commercially conducts the above acts infringes the patent right, and said person is liable for damages under the Patent Law.