Following a decision made by the Japan Patent Office (“JPO”) that the present invention (concerning “an energy saving action sheet”) should not fall under an “invention” as defined in Article 2, Paragraph 1 of the Patent Act, the Plaintiff filed an appeal before the IP High Court (“IPHC”). In conclusion, the IPHC dismissed the appeal filed by the Plaintiff.

The claim of the invention at issue is as follows:

“An energy saving action sheet comprising: a third place axis expressing a name of a place in a building and an amount of power consumed per unit time at the place by means of a length in a direction of the axis;

a third time axis expressing time, said time axis having time scale; and

a third action arrangement region for showing

an energy saving action to be done in a certain region specified by the third place axis and the third time axis;

wherein a third energy saving action identification region is formed in the third action arrangement region wherein an amount of power per unit time capable of being saved by an energy saving action is indicated by a length in a direction of the third place axis and a duration time of the energy saving action is indicated by a length in a direction of the third time axis, thereby showing an outline amount of power capable of being saved by doing a corresponding energy saving action indicated in the third energy saving action identification region (an amount of power capable of being grasped with an area corresponding to a value obtained by multiplying an amount of power per unit time capable of being saved by the corresponding energy saving action and a duration time of the energy saving action).”

In its decision, the IPHC set out the standard to determine whether an invention falls under an “invention” as defined in the Patent Act:

It should be determined by judging whether the invention falls under “a creation of a technical idea utilizing a natural law” in the light of the technical significance including the followings: the technical problems on which the invention is based, the structure of the technical means for solving the problems, and the effects achieved by the structure, etc.

A human activity, decision-making, an abstract idea or human decision, as such is not directly regarded as “utilizing a natural law” because it is not any natural law or it does not utilize any natural law.

Therefore, even though an invention presents some technical idea, the invention does not fall under the “invention” as defined in the Patent Act if the invention is judged to be directed to a human activity, decision-making, an abstract idea or human decision, as such, and therefore the invention is not judged to utilize any natural law.

In the light of the foregoing standard, the IPHC analyzed whether the present invention fell under an ‘invention’ as defined in the Patent Act:

The technical significance of the present invention is as follows: By presenting a user, that is, a person with the “energy saving action indicated in the third energy saving action identification region” identified as letters and the “outline amount of power capable of being saved by doing a corresponding energy saving action” identified as an area, the person grasps an energy saving action to be done and an outline amount of power capable of being saved by the action. And that is solely directed to a human mental activity as such.

As the present invention is essentially solely directed to a human activity itself and therefore is not any natural law nor is it utilizing any natural law, it does not fall under the ‘creation of a technical idea utilizing a natural law’ as a whole.”

Besides,the Plaintiff  made the following arguments in this case:

  • Whether or not any natural law is utilized should be determined based on whether or not the claim elements as such follow any natural law, not on the function or effects of the present invention”.
  • In the present invention, a sheet is typically made of paper, and a region and the name of the region typically consist of ink, claim 3 recites an idea that a line drawing is arranged at a predetermined position with the natural objects of “paper” and “ink”, and there is no elements directed to a human activity in the elements of the present invention.

However, these arguments were not accepted by the IPHC for the following reasons:

  •  According to Article 36, Paragraph 4 (1), the technical significance of an invention should be identified by taking into account not only the elements recited in the claims, but also the detailed description of the specification.
  • The claim of the invention at issue does not require that the invention should comprise paper or ink.
  • Even if the patent specification is considered, as the specification describes not only an embodiment where the ‘energy saving action sheet’ may be printed with a printer device, but also an embodiment where the ‘energy saving action sheet’ may be displayed on a display device, the present invention does not require or specify any kind or structure of the medium itself that is the “energy saving action sheet”. Therefore, the technical meanings of the present invention are not directed to the medium of the “energy saving action sheet” but are solely directed to a human activity itself.” (Emphasis added.)