- Email: [email protected]
Japanese trade jurisprudence
Computer
such a further technical effect could have the necessary technical character where, for example, it causes the software to solve a technical problem (compare for example the VICOM de c i sio n T 208/84, OJ 1987, 14), or w h e r e technical considerations are involved to arrive at the invention (compare for example the SOHEI de c i s io n T 7 6 9 / 9 2 , OJ 1995 525). Where a c o m p u t e r program product produces such a further technical effect w h e n run on a computer, the Board described such a c o m p u t e r program product as having the p o t e n t i a l to p r o d u c e such a f u r t h e r t e c h n i c a l effect. Accordingly, in a case w h e r e a specific c o m p u t e r program product, w h e n run on a computer, brings about such a further technical effect, the Board could see no good reason to distinguish b e t w e e n a direct technical effect and an indirect technical effect. Using a similar line of reasoning as in the VICOM decision, the Board found that it w o u ld be illogical to grant a patent for a m e t h o d and an apparatus adapted for carrying out the same method, but not for the c o m p u t e r program, w h i c h comprises all the features enabling the implementation of the m e t h o d and which, w h e n loaded in a computer, is indeed able to carry out that method. Also, bearing in mind the findings in the BBC decision T 163/85, OJ 1990, 379 w h e r e it was held that a television signal was patentable, the Board did not consider that it made any difference w h e t h e r a c o m p u t e r program p r o d u c t is claimed by itself or as a record on a carrier. The Board did not finally decide on a specific wording for a program product claim in the cases concerned, but instead remitted the cases back to the Examining Division to make
Program-Related
Patents
this determination. However, it is to be noted that the EPO Board has gone further than the Beauregard case in the USA, in suggesting that claims may be obtained to a c o m p u t e r program product without a reference to some sort of carrier.This would appear to give considerable flexibility in determining claims appropriate to provide coverage for an invention, for example for a software-implemented invention distributed online over the Intcrnct. A further important issue was addressed by the Board in these two decisions.While pointing out that "the question to be decided upon the present appeal has not been answered earlier by the boards of appeal", the Board felt obliged to comment on case T 0 2 0 4 / 9 3 "System for generating software source code/ATT". In this case the Board had recognized "that c o m p u t e r programs may be useful, or applicable to practical ends" and w h e n e x e c u t e d by a c o m p u t e r may control a patentable technical process and had stated "that c o m p u t e r programs as such, i n d ep en d en t of such an application are not patentable irrespective of their content, even if that content happens to be such as to make it useful, w h e n run, for controlling a technical process". The Board in these t w o recent decisions wished "to distinguish the cited decision T204/93, insofar as the latter purports to exclude all c o m p u t e r programs as such, i.e. irrespective of their content". Both cases were remitted back to the Examining Division for examination of the wording of the claims as to w h e t h e r they avoid exclusion from patentability under Article 52 (2) and (3) as n o w construed. Robert J. Hart, Report Correspondent.
Book Review Trade Mark Law Japanese Trade Jurisprudence, by K e n n e th L. Port, 1998, hard-cover, Kluwer Law Interuational, 183 pp., NLG162.00, US$88.00, £55.00, ISBN 90 411 0701 0 In this study of the Japanese trademark law system the author presents the v i e w of trademark rights in Japan as articulated in the relevant statutes and by Japanese courts and commentators.The work consists of a systematic analysis of the Japanese trademark system based almost exclusively on the Japanese judge's expression of the trademark right as viewed from the judiciary. It is intended to be objective and not defensive of the 'majoritarian American view' that the trademark system in Japan is s o m e h o w flawed. One of the conclusions the author makes in the study is that Japanese judges are extremely reticent to rescind an existing trademark right.The courts are very conscious of the significance of protecting trademark rights and do not randomly extinguish t h e m as some analyses suggest.The author concludes that Japanese corporations have b e e n extremely sophisticated in using trademark law as part of their overall strategy for international competition for market share. The book is primarily an analysis of h o w Japanese courts treat what they refer to as the trademark right. It is not intended as an introductory text on the process, procedures or structures of Japanese law, and the author proceeds on the assumption that the reader has a basic understanding of the process of law in Japan, including the procedures and organizations of courts, as well as a outline of the judicial system. The author also hopes that the work will inform two larger debates regarding law in Japan, namely market access and rights consciousness.The market access debate addresses the need of US and other foreign competitors to sell their goods in Japan, whereas the rights consciousness discussion centres on the question w h e t h e r the Japanesc are as litigious as one would e x p e c t a m o d e r n advanced society to be. Available from: Kluwer Law International Ltd, Sterling House, 66 Wilton Road, London, SWlV 1DE, UK, or, in the USA and Canada, by Kluwer Law International, 675 Massachusetts Avenue, Cambridge, MA 02139, USA. In all o t h er countries contact: Kluwer Law International, PO Box 322, 3300 AH, Dordrecht, the Netherlands.
Computer Law & Security Report Vol. 15 no. 3 1999 ISSN 0267 3649/99/$20.00 © 1999 Elsevier Science Ltd. All rights reserved
189
such a further technical effect could have the necessary technical character where, for example, it causes the software to solve a technical problem (compare for example the VICOM de c i sio n T 208/84, OJ 1987, 14), or w h e r e technical considerations are involved to arrive at the invention (compare for example the SOHEI de c i s io n T 7 6 9 / 9 2 , OJ 1995 525). Where a c o m p u t e r program product produces such a further technical effect w h e n run on a computer, the Board described such a c o m p u t e r program product as having the p o t e n t i a l to p r o d u c e such a f u r t h e r t e c h n i c a l effect. Accordingly, in a case w h e r e a specific c o m p u t e r program product, w h e n run on a computer, brings about such a further technical effect, the Board could see no good reason to distinguish b e t w e e n a direct technical effect and an indirect technical effect. Using a similar line of reasoning as in the VICOM decision, the Board found that it w o u ld be illogical to grant a patent for a m e t h o d and an apparatus adapted for carrying out the same method, but not for the c o m p u t e r program, w h i c h comprises all the features enabling the implementation of the m e t h o d and which, w h e n loaded in a computer, is indeed able to carry out that method. Also, bearing in mind the findings in the BBC decision T 163/85, OJ 1990, 379 w h e r e it was held that a television signal was patentable, the Board did not consider that it made any difference w h e t h e r a c o m p u t e r program p r o d u c t is claimed by itself or as a record on a carrier. The Board did not finally decide on a specific wording for a program product claim in the cases concerned, but instead remitted the cases back to the Examining Division to make
Program-Related
Patents
this determination. However, it is to be noted that the EPO Board has gone further than the Beauregard case in the USA, in suggesting that claims may be obtained to a c o m p u t e r program product without a reference to some sort of carrier.This would appear to give considerable flexibility in determining claims appropriate to provide coverage for an invention, for example for a software-implemented invention distributed online over the Intcrnct. A further important issue was addressed by the Board in these two decisions.While pointing out that "the question to be decided upon the present appeal has not been answered earlier by the boards of appeal", the Board felt obliged to comment on case T 0 2 0 4 / 9 3 "System for generating software source code/ATT". In this case the Board had recognized "that c o m p u t e r programs may be useful, or applicable to practical ends" and w h e n e x e c u t e d by a c o m p u t e r may control a patentable technical process and had stated "that c o m p u t e r programs as such, i n d ep en d en t of such an application are not patentable irrespective of their content, even if that content happens to be such as to make it useful, w h e n run, for controlling a technical process". The Board in these t w o recent decisions wished "to distinguish the cited decision T204/93, insofar as the latter purports to exclude all c o m p u t e r programs as such, i.e. irrespective of their content". Both cases were remitted back to the Examining Division for examination of the wording of the claims as to w h e t h e r they avoid exclusion from patentability under Article 52 (2) and (3) as n o w construed. Robert J. Hart, Report Correspondent.
Book Review Trade Mark Law Japanese Trade Jurisprudence, by K e n n e th L. Port, 1998, hard-cover, Kluwer Law Interuational, 183 pp., NLG162.00, US$88.00, £55.00, ISBN 90 411 0701 0 In this study of the Japanese trademark law system the author presents the v i e w of trademark rights in Japan as articulated in the relevant statutes and by Japanese courts and commentators.The work consists of a systematic analysis of the Japanese trademark system based almost exclusively on the Japanese judge's expression of the trademark right as viewed from the judiciary. It is intended to be objective and not defensive of the 'majoritarian American view' that the trademark system in Japan is s o m e h o w flawed. One of the conclusions the author makes in the study is that Japanese judges are extremely reticent to rescind an existing trademark right.The courts are very conscious of the significance of protecting trademark rights and do not randomly extinguish t h e m as some analyses suggest.The author concludes that Japanese corporations have b e e n extremely sophisticated in using trademark law as part of their overall strategy for international competition for market share. The book is primarily an analysis of h o w Japanese courts treat what they refer to as the trademark right. It is not intended as an introductory text on the process, procedures or structures of Japanese law, and the author proceeds on the assumption that the reader has a basic understanding of the process of law in Japan, including the procedures and organizations of courts, as well as a outline of the judicial system. The author also hopes that the work will inform two larger debates regarding law in Japan, namely market access and rights consciousness.The market access debate addresses the need of US and other foreign competitors to sell their goods in Japan, whereas the rights consciousness discussion centres on the question w h e t h e r the Japanesc are as litigious as one would e x p e c t a m o d e r n advanced society to be. Available from: Kluwer Law International Ltd, Sterling House, 66 Wilton Road, London, SWlV 1DE, UK, or, in the USA and Canada, by Kluwer Law International, 675 Massachusetts Avenue, Cambridge, MA 02139, USA. In all o t h er countries contact: Kluwer Law International, PO Box 322, 3300 AH, Dordrecht, the Netherlands.
Computer Law & Security Report Vol. 15 no. 3 1999 ISSN 0267 3649/99/$20.00 © 1999 Elsevier Science Ltd. All rights reserved
189