Fellow practitioners who deal with Japanese patent drafting may notice that there seems to be liberal employment of functional limitations in Japanese patent claims; Japanese agents seem to have a soft spot for (pure) functional/intended use/end result claim limitations, regardless of the technical field of the invention.
The Japan Patent Office (JPO) recently commissioned the well-known Shiga International Patent Office to conduct a practical research survey on the usage of functional terms in domestic computer software patents. The scope of the survey includes questionnaires for several Japanese companies.
The results of the questionnaire survey show that most companies prefer functional terms in the specification of computer software-related patent applications. One (main) reason is that respondents generally believe that often technical features are difficult to be expressed in ways other than functional terms. Interviewees generally believe that if they do not adopt functional language, they will not be able to cover a larger scope of patent applications due to third parties’ clever/unforeseeable design-around.
The Japanese Patent Law currently provides relevant provisions on the implement-ability of inventions of general technical fields, e.g., enablement provision, material supported provision, and clarity provision. However, rules regarding functional language related to computer software applications are separately listed in the examination guideline and examination manual. It is said that, in current examination practice, the interpretation of functional language in the claims is mainly based on the content of the patent claims. On the other hand, during infringement disputes, the interpretation of functional terms tends to be interpreted based on the contents in the specification. Only a few lawsuits base the content of the patent application itself to provide expiation for functional limitations. Thus, there seems to be a gap between the examination and the infringement practices.
However, current Japanese examination guidelines have yet to provide very clear criteria for software-related inventions (just like most other countries), so patent applicants can only refer to the requirements provided in the examination guidelines for now.
Therefore, we shall continue to monitor the revision process from the JPO to keep up with the development of new regulations.
(Sincere thanks to the generous sharing of this interesting information by “專利新知不藏私”)