JAPAN Trends and Developments Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian, Chuo Sogo LPC
have been easily conceived by a person skilled in the art (an individual with ordinary knowledge in the relevant technical field) prior to the patent application. Since it is challeng- ing to equate the creative abilities of natural persons with AI’s evolving autonomous crea- tive abilities, it is inappropriate to immediately apply the concept of “a person skilled in the art” to AI. In this case, the invention was filed as a PCT international application. With the exception of South Africa, which conducts only formal exami- nations, the eligibility of AI as an inventor has been denied in other jurisdictions, including the United States (USPTO), the United Kingdom (UKIPO), and Europe (EPO). Similarly, in this rul- ing, the Court held that it is reasonable to inter- pret “inventor” as stipulated in the Patent Act as being limited to natural persons. This marked the first time in Japan that the eligibility of AI as an inventor was explicitly denied. In this case, the plaintiff argued that despite the emergence of AI-generated inventions in the industrial sector, adhering uncritically to the tra- ditional inventor-centric view – where only natu- ral persons can be inventors – fails to consider the incentives for AI-generated inventions. The plaintiff claimed this approach contradicts the purpose of the Patent Act, which is to “contrib- ute to the development of industry” (Article 1 of the Patent Act). However, the Court took a conservative stance, emphasising the difficulties of defining inven- torship in AI-generated inventions within the framework of the existing Patent Act, which was designed with natural persons in mind. The judgment highlighted that current patent law does not clearly specify who among those associated with an AI invention (such as the AI
itself, the rights holders of the AI’s source code or software, or those who exclusively control the AI) should be granted inventorship and the right to a patent. This ambiguity made it chal- lenging to create new legal principles through judicial precedent in this domain, given the criti- cal importance of determining the ownership of patent rights. Given the ongoing advancements in AI, devel- oping intellectual property frameworks and leg- islation that address these emerging issues will be necessary. The Court also acknowledged the importance of AI-generated inventions in indus- trial policy and expressed the need for legislative efforts to address the challenges surrounding such inventions. It emphasised the importance of examining AI-generated inventions from a leg- islative perspective and reaching conclusions on the matter as promptly as possible. Future legislative developments will be expected to resolve the issues surrounding the recognition of AI as an inventor, ensuring that the intellectual property system evolves in line with technologi- cal advancements. JFE Steel Corporation v Nippon Steel Corporation, Case No 2023 (Gyo-Ke) 10020 and 10021, Intellectual Property High Court (decision rendered on 23 January 2024) Support requirement under the Patent Act Article 36(6)(i) of the Patent Act stipulates the so-called support requirement that the invention set out in the claims must not exceed the scope described in the detailed explanation of the invention. This is because, if the claims included an invention not disclosed in the detailed expla- nation, rights would be conferred on an undis- closed invention. The support requirement is intended to prevent such a situation. Failure to meet the support requirement not only consti-
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