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“Not an Invention” Rejections in Japan (Article 29(1) Main Paragraph): Software, Business Methods and the Hardware-Resource Test

Picture of Takefumi Sugiura – Japanese Patent Attorney
“Not an Invention” Rejections in Japan (Article 29(1) Main Paragraph): Software, Business Methods and the Hardware-Resource Test

A Japanese Office Action stating that the claimed subject matter “does not fall under an invention” cites the main paragraph of Article 29(1). It is the Japanese counterpart of eligibility rejections elsewhere, but the test is different: the question is whether the claim is a creation of a technical idea utilizing a law of nature, and for software the JPO asks a specific, answerable question — is the information processing concretely realized using hardware resources? This article explains the test and how to redraft a claim to pass it.

1. The Statutory Definition and Where the Rejection Comes From

Art. 2(1) of the Patent Act defines an invention as a highly advanced creation of a technical idea utilizing a law of nature; Art. 29(1) main paragraph grants a patent only to one who has made an invention that is industrially applicable. A claim that fails the definition is rejected under Art. 29(1) main paragraph without any examination of prior art — which is why this ground appears alone, or as “Ground 1” ahead of the substantive grounds.

2. What Is Not an Invention: the Guidelines’ List

Category (Examination Guidelines, Part III Ch. 1)Example given
Laws other than natural lawsEconomic laws
Artificial arrangementsRules of a game as such
Mathematical formulas—
Human mental activities—
Subject matter using only the aboveA method of doing business as such

3. The Whole-Claim Principle

The Guidelines direct the examiner to judge the claim as a whole. Even if some matters specifying the invention utilize a law of nature, the claim is not an invention if, taken as a whole, it does not; conversely, even if some matters do not utilize a law of nature, the claim is an invention if, taken as a whole, it does. This is why adding a generic “computer” to a business scheme rarely helps, while a claim that describes a concrete technical implementation can contain non-technical elements without failing.

4. Software: the Hardware-Resource Test (Examination Handbook, Annex B)

For computer software-related inventions, Annex B, Chapter 1 of the Examination Handbook supplies the operative test: the claim is an invention where information processing by the software is concretely realized using hardware resources — in other words, where software and hardware cooperate so that a specific information processing apparatus (or method of operating one) suited to the intended use is built. What the examiner looks for in the claim:

  • Which hardware element performs each processing step (processor, memory, sensor, communication unit …)
  • What data is acquired, how it is processed, and what is output or controlled
  • Whether the processing is specific to the purpose, rather than a rule or calculation stated in the abstract

The claim that fails

“A method comprising: receiving an order; determining a discount according to rule X; and notifying the customer” — with “by a computer” attached — recites an artificial arrangement executed on a generic machine. Nothing in the claim shows software and hardware cooperating in a specific way. It is rejected under Art. 29(1) main paragraph however novel rule X may be.

5. Redrafting a Claim to Pass

FromTo
“A method of … comprising steps A, B, C”“An information processing apparatus comprising a receiving unit that acquires … data from …; a processing unit that … the data by …; and an output unit that …”
“by a computer” as a preambleEach step tied to a recited hardware element and to the data it handles
A rule or formula as the claimed contributionThe technical means by which the rule is applied to concrete data to produce a concrete result
A business outcome (“increasing sales”)A technical effect of the processing (“reducing the data volume transmitted”, “shortening the response time”)

All of this must be drawn from the original disclosure (Art. 17-2(3)). Specifications drafted for other offices often describe the implementation in the detailed description without claiming it; in that case the amendment is available. If the description contains only the scheme, the case is difficult.

6. Business-Related Inventions and AI-Related Claims

Business-related inventions are examined under the same test: the commercial idea is not patentable as such, but its implementation by specific information processing using hardware resources can be. AI-related claims follow the same logic — a trained model or a training method is claimed by the data handled, the processing performed and the hardware on which it runs, not by the mathematical idea alone. The JPO publishes worked examples for both in the Handbook annexes. For deadlines and extensions on the Office Action itself, see the Office Action hub; for the substantive grounds that usually follow an eligibility rejection, our inventive step guide.

Frequently Asked Questions

What does the main paragraph of Article 29(1) require?
That the subject matter be an “invention” within Art. 2(1) of the Patent Act — a highly advanced creation of a technical idea utilizing a law of nature — and be industrially applicable. Subject matter that is not an invention cannot be patented regardless of novelty or inventive step.
Which things are not inventions under JPO practice?
The Examination Guidelines list, among others: laws other than natural laws (e.g. economic laws), artificial arrangements (e.g. game rules as such), mathematical formulas, human mental activities, and subject matter that uses only these (e.g. a method of doing business as such). The claim is judged as a whole: a claim can fail even if some features use a law of nature, and pass even if some features do not.
What is the hardware-resource test for software?
Under Annex B, Chapter 1 of the Examination Handbook, a software-related invention is an invention if information processing by the software is concretely realized using hardware resources — that is, the software and hardware cooperate to build a specific information processing apparatus or method suited to the intended use. A claim reciting only a rule or a calculation, with a generic computer as backdrop, does not meet the test.
Is a business method patentable in Japan?
A business method as such is not. A business-related invention implemented by specific information processing using hardware resources can be — the claim must recite the technical means (what data is acquired, how it is processed by which hardware element, what is output) rather than the commercial scheme.
How should a US- or EP-style software claim be adapted for Japan?
Recast the claim as an apparatus, method or program in which each step is performed by a recited hardware element on recited data, so that the cooperation of software and hardware appears on the face of the claim. The material must come from the original disclosure (Art. 17-2(3)); if the specification describes the implementation, the amendment is usually available.

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Disclaimer

This article provides general information about Japanese patent practice as of September 2026 and does not constitute legal advice. Periods, fees and examination practice may change, and the deadline for a specific case depends on the documents actually issued. Please consult a qualified Japanese patent attorney about your specific matter.

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