Rejoinder to Mr. Zumwalt and Mr. Yamada on Patents

Hiroshi KONNO (Professor, Chuo University)

I have received the comments of Mr. Zumwalt and Mr. Yamada on my article regarding the "American standard" for patents.

First, I would like to repeat the following two points that I made in my article:

1. Protecting abstract ideas by granting patents such as those for software and for business methods tends to have a negative effect on the development of technology and industry.

2. It would be undesirable for Japan to have a mutual patent recognition system between Japan and the U.S., because there exist vast differences in social systems and technological culture between the two countries.

In his comment on these points, Mr. Zumwalt insisted the following:

1. Patent protection (category 705) for business methods requires novel, non-obvious ideas with useful, concrete and tangible results and, therefore, just abstract ideas would not do.

2. There is a long history in U.S.-Japan cooperation regarding patent administration, and a mutual patent recognition would not mean that Japan should accept U.S approved patents automatically.

3. The level of patent examination in the U.S. is comparable to that in Japan and Europe.

Also, according to Mr. Yamada, the problems that I pointed out would be resolved sooner or later, because there were the following agreements among Japan, the U.S. and Europe in 2000:

1. Patents for business methods require certain technological elements and would not be granted for those methods that use already known technologies to automate already known business transactions.

2. Efforts would be made to check previously patented technologies more carefully in order to improve the level of patent examination.

Of course, I was aware of these facts when I wrote my article. For example, these points were explained in my recent book, "Tokkyo bijinesu wa dokoe ikunoka" (Where is patent business going" (published by Iwanami shoten in 2002, pp. 145 - 146). However, I am still concerned about the points I made for the following reasons:

1. Although the official position of the U.S. government may be supporting the views of Mr. Zumwalt and Mr. Yamada, the U.S. patent office has been granting patents to dubious ideas, in spite of the 1981 U.S. Supreme Court decision in such cases, and still continues to issue software patents and business method patents with no account at all for their technological aspects. In other words, the problem is the fact that there exists a large discrepancy between the official positions of the U.S. government and the U.S. Supreme Court on one hand and the actual administration of the U.S. Patent Office.

2. Although I have not read the report of the Patent and Trademark Office Society (since it is unpublished), I would say that it is difficult to believe the conclusion that "the level of patent examination in the U.S. is comparable to that in Japan and Europe." It is not clear whether this Society is neutral or not, and furthermore, this kind of comparison could lead to any kind of conclusion, depending on the method of empirical studies. By casual observation, we cannot help but say that the examination level in the U.S. is much lower than that in Japan, and sometimes appears absurdly low (see Mr. Aharonian's column in Scientific America for such examples).

3. It is well known that there are many objections to patents for software and for business methods, but an important point is that these patents are criticized and disregarded by most of the good software engineers, and the better they are as software engineers, the stronger they tend to object. In other words, just ordinary inventions from the viewpoint of good engineers are being granted patents one after another.

The main reason for a sharp rise in the number of patent applications in recent years is because corporations have hastily been applying for defensive patent protection in massive quantities in view of recent increases in the number of dubious patents, as the U.S. government has been successively expanding the scope of patents. As a matter of fact, in the spring 2001 I joined my colleagues and applied for patent protection for our financial business method as a defensive move, because we were afraid that the use of our method could be denied by appeals from the U.S. side (we would have never made such a move if there had not been a change in this area on the U.S. side).

I hear that the U.S. is taking a step further from software patents, business method patents and DNA patents to medical patents. If this is true, then the number of patent applications would continue to increase significantly, and patent examination would be delayed further. I hope this would not lead to the deterioration of the patent examination level and the ultimate confusion, and possibly the collapse, of the patent system in the U.S.

Finally, I would like to express thanks for comments on my piece, especially from the American Embassy. it's the Embassy's response to criticisms for the sake of national interest is something that the Japanese Embassy should learn from and adopt. Also, I am relieved to find out by reading the comments that the U.S. government has no intention to jeopardize Japan's sovereign rights in this area.