After the spring in 2020, the number of court decisions is extremely small because the Intellectual Property High Court (IP High Court) in Japan was closed for a few months in 2020 due to the influence of COVID-19.

  Therefore, here introducing a court decision held a little while ago in June 2020, which should be understood by applicants and their representatives when creating claims. This is the court decision determining whether the filed "invention relating to a payment system for financial institutions" falls under the creation of technical ideas utilizing the laws of nature.

  The examiner made the decision of refusal to the application regarding the invention titled "a method for settling electronically recorded monetary claims and a monetary claim management server" (hereinafter, referred to as "Present Invention"). The applicant filed to the Trial and Appeal Department (TAD) an appeal against examiner's decision of refusal.

  The TAD held that Present Invention is not considered as an "invention" under the Patent Act as it does not fall under a "creation of technical ideas utilizing the laws of nature." The TAD also held that Present Invention lacks the inventive step based on the known art before the application. On this ground, the TAD decided to dismiss the appeal.

  The court decision introduced herein is on a case in which the applicant was dissatisfied with the examiner's decision and sought recession of the trial decision to the IP High Court.
 

Present Invention claims:
[Claim 1]
  A method of settling an electronically recorded monetary claim, comprising the steps of:

  sending a first transfer signal for transferring an amount of money corresponding to an amount of the electronically recorded monetary claim, to an account of a creditor;

  sending a first debit signal for debiting a discount fee corresponding to a discount fee of the electronically recorded monetary claim, from an account of a debtor; and

  sending a second debit signal for debiting the amount of the electronically recorded monetary claim, from the account of the debtor.

  Here, one example of the "monetary claim" is a "bill."

  The "discount fee" corresponds to an amount of money equal to the total of an interest charged on the monetary claim until the payment, costs for credit risk of the drawer, and fees required for cashing the monetary claim at financial institutions.

  As the social background, although it is reasonable that the "discount fee" should be borne by ordering parties considering the nature of the "discount fee," it was often borne by subcontractors in a vulnerable position to the ordering parties.

  Therefore, in order to protect the subcontractors in the vulnerable position, the Guidelines for the Subcontract Act were amended in 2016. The amended Guidelines for the Subcontract Act show that it is reasonable that the "discount fee" is borne by the ordering parties. The application of Present Invention was filed in 2018, which was after the amendment of the Guidelines for the Subcontract Act.

  The IP High Court showed the following norms regarding the decision of applicability as an "invention."

  An "invention" is defined in the Patent Act to be a "highly advanced creation of technical ideas utilizing the laws of nature." Those not utilizing the laws of nature, for example, mere mental activities, purely academic laws, and arbitrary arrangements are not considered as an "invention."

  Then, the "invention" is accomplished through the stages of setting certain technical problems, adopting technical means to solve the problems, and confirming the effects of achieving the purpose of the invention by the technical means. Whether the "invention for which a patent is sought" recited in the claims is considered as the "invention" should be determined based on whether the invention as a whole falls under a creation of technical ideas "utilizing the laws of nature," in light of the technical problems which is the premise of the "invention for which a patent is sought," the configuration of the technical means to solve the problems, and the technical significance, such as the effects, lead from the configuration, which are disclosed in the claims, specification and drawings accompanying with the patent application.

  Therefore, even when some technical means are disclosed in the "invention for which a patent is sought," it is not considered as the "invention" if an essence of the invention (feature configuration) is directed to mere mental activities, purely academic laws, arbitrary arrangements, etc., as a result of comprehensive consideration.

  Accordingly, the IP High Court held as described below in more detail.

  In consideration of the technical problems, the technical means to solve the problems, and the effects achieved by the technical means described in the specification of Present Invention, the technical significance of Present Invention is merely that it makes the debtor bear the discount fee of the electronically recorded monetary claim.

  Although Present Invention includes "sending" the "signals," it just utilizes the conventional method for settling the electronically recorded monetary claim. That is, the significance of Present Invention is to make the debtor bear the discount fee of the electrically recorded monetary claim, and the "signals" and the "sending" themselves stated by the plaintiff are used only as means for achieving the invention based on the ordinary usage without adding any technical contrivance.

  Based on the experience and memory of the author myself, in the technical field of game machines such as slot machines, there was a time when patents were granted for a lot of inventions of which feature configurations are only arbitrary arrangements, such as adding patters of "winning" which had not existed before, so as to give game players unconventional excitement.

  However, from now on, as indicated by this court decision, an invention of which a feature configuration is only arbitrary arrangements along with the configuration of the conventionally known technical means, is more unlikely to be patented as not being recognized as a "creation of technical ideas utilizing the laws of nature."

  In order to let the invention for application be considered as a "creation of technical ideas utilizing the laws of nature" when the feature configuration is based on the arbitrary arrangements compared with the conventional art, it may be necessary to devise the application as if new technical means are required in order to achieve the purpose of the invention.