## Facts

- A U.S. company sought a Japanese patent (national-phase entry of a PCT application) for an “Interactive Dental Restorative Network.”
- The claimed system connected dental clinics and dental laboratories through a network server and database to support restorative dental treatment using digital images and color information.
- Claim 1, in substance, recited a network server with a database of prosthetic-material information, a communications network, clinic-side computers displaying database information, and functional “means” for determining required restoration and formulating an initial treatment plan that could be transmitted to a laboratory and updated into a final plan.
- A JPO examiner rejected the application, reasoning the claims were not an “invention” because they were essentially directed to a dentist’s mental activities (diagnosis and treatment planning).
- On administrative appeal within the JPO, the Board rejected the applicant’s attempted claim amendments as impermissible and affirmed the rejection for lack of an “invention.”
- The applicant filed an administrative action in the Intellectual Property High Court seeking cancellation of the JPO Board decision.

## Issues

1. Whether the JPO Board lawfully refused the applicant’s claim amendments under Patent Act art. 17-2.
2. Whether the claimed computer-based dental treatment network constituted an “invention” under Patent Act art. 2(1) and art. 29(1) main paragraph, even though claim elements involved human mental activity.

## Decision

- The court upheld the JPO Board’s refusal to accept the proposed claim amendments.
- The court set aside the JPO Board’s substantive conclusion that the claims were not an “invention.”
- The court held that, viewed as a whole, the claims were directed to technical means implemented through a computer-based networked system supporting dental treatment, not to mental activity itself.
- The court canceled the JPO Board decision and awarded litigation costs against the government, effectively remanding the matter for further proceedings consistent with the judgment.

## Legal Principles

- Patent-eligibility turns on the claim “as a whole”: merely mentioning technical components does not suffice if the invention’s essence is directed to mental activity itself.
- Subject matter whose essence is human mental activity (e.g., judgment or decision-making as such) does not qualify as an “invention” under the statutory definition requiring technical ideas using laws of nature.
- Even if a claim includes or relates to human mental activity, it can still be an “invention” when its essence is technical means—implemented by computers, networks, databases, and related functions—that support or substitute for the mental activity.
- In assessing “essence,” courts consider the structural and functional configuration of the claimed system (e.g., network server/database, communications network, clinic-side computer, and image display/processing capabilities) rather than isolating mental-activity phrases.

## Conclusion

The court distinguished unpatentable claims directed to mental activity itself from patent-eligible computer-implemented systems that technically support such activity, holding the dental restorative network claims qualified as an “invention” and canceling the JPO’s contrary decision.


Shade Analyzing Techs., Inc. v. Comm’r of the Japan Patent Office, Heisei 19 (Gyo-ke) No. 10369 (Intell. Prop. High Ct. June 24, 2008)