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Considerations for Applications filed under the New Edition of the Examination Guidelines for Computer Software Related Inventions (2022.06.13)

 

Wilson Cheng*

I. Overview

As computer software is an increasingly important component in a wide range of products, and techniques in artificial intelligence and big data are developing rapidly, protection for computer software related inventions is growing in constant importance. To adapt to the demands for innovation protection, a recent amendment to the Examination Guidelines for Computer Software Related Inventions, which has been effective since July 1, 2021, provides clearer boundaries for patentability to patent examiners and applicants. The following is an analysis regarding the key aspects for acquiring computer software related patents.

II. Definition of Computer Software Related Inventions

First and foremost, the claims directed to a computer software related invention should comply with the requirement of Article 21 of the Taiwan Patent Act, which defines “invention” as a creation of technical ideas, utilizing the laws of nature. Accordingly, the first step of patent examination is to determine whether the invention of each claim as a whole complies with this definition.

If an invention is concerned with specific execution of control of a machine or processing accompanying control, it obviously meets the above definition. For example, if an invention relates to controlling a structure, component, effect, function, characteristic or action of a machine, or specific execution of information processing based on technical characteristics of an object, it also obviously meets the legal definition of an invention.

However, if a claimed invention neither utilizes the laws of nature nor relates to technical ideas, e.g., an artificial arrangement, human made rule, mathematical formula or method, activity performed in the human mind or business method implemented using an artificial arrangement, it obviously does not constitute an invention in accordance with the above definition.

Further, if it cannot be conclusively determined whether a patent application satisfies the criteria for an invention, a patent examiner will determine whether information processing of computer software can be implemented by a hardware resource. That is, if the claimed invention relates to a particular information processing device or a method established based on purposes of information processing through cooperation of computer software and hardware resources, it meets the definition of an invention.

III. Specification for Computer Software Related Inventions

In a patent specification, a computer software related invention should be fully disclosed in a manner clear and sufficient so that a person ordinarily skilled in the art can understand and carry out the claimed invention. In accordance with Article 26, Paragraph 1 of the Taiwan Patent Act, disclosure of an invention relating to combination of multiple functions performed by a computer software should enable a person ordinarily skilled in the art to carry out the invention, based on the specification, claims and drawings in view of common knowledge at the time of filing. In this regard, to ensure sufficiently clear disclosure, technical content of the invention shall be described in flow chart diagrams or functional block diagrams.

Further, the specification should disclose a general-purpose computer or processor and an algorithm to achieve and implement the particular function by the general-purpose computer or processor.

IV. Claims for Computer Software Related Inventions

To make computer software related inventions patentable, method claims or product claims are usually included in patent specifications. The method claims may recite steps or timing of the claimed processes to be executed. Patent-eligible inventions include specific methods or systems, computer programs (products), computer readable (recording) media, computer-implemented methods and data structures (products).

A claim directed to a computer software related invention may recite the following descriptions.

1. A system comprising: one or more processors; and a non-transitory memory coupled to the processors comprising instructions executable by the processors, the processors operable when executing the instructions … : step 1 …; step 2 ….

2. A computer readable storage media embodying software that is operable when executed … : step 1 …; step 2 …. 

3. A non-transitory computer readable storage medium having instructions encoded thereon that, when executed by a processor, cause the processor … : step 1 …; step 2 ….  

Under Article 26, Paragraph 2 of the Taiwan Patent Act, a claim shall define the claimed invention. Each claim shall be recited in a clear and concise manner, and supported by the specification. If a claim is defined by a function, the patent specification of the claimed invention should contain implementations that enable such function. Determination of whether a claim can be supported by the specification is made based on whether a person ordinarily skilled in the art can extend the content in the specification to cover the entire scope of the claim based on common knowledge at the timing of filing. If the content disclosed in the specification can be extended to cover the entire scope of the claim, the claim can be supported by the specification.

In practice, for a claim directed to a computer software related invention defined by a function, a patent examiner usually searches all possible prior art capable of achieving such function and issues an Official Letter to inform the applicant if any prior art is found. In this situation, a response to the Letter includes stating the substantial differences between the claimed invention and the prior art, or reshaping the claim to a means-plus-function claim and explaining how the means-plus-function claim can be supported by the specification.  

V. Inventiveness of Computer Software Related Inventions

According to Article 22, Paragraph 2 of the Taiwan Patent Act, an invention easily made by a person ordinarily skilled in the art based on prior art shall not be patented. The Taiwan Patent Examination Guidelines further state that, in terms of the determination of inventiveness, a claimed invention must be considered as a whole, rather than individual or partial technical features of the invention. The aforesaid determination shall be made based on the specification, claim(s) and drawing(s) with reference to common knowledge at the time of filing the relevant patent application.

A computer software related invention is usually implemented by a skilled person applying computer software related techniques to a technical field in order to solve a particular problem. “The person ordinarily skilled in the art” in the field of the computer software related inventions refers to a person having common knowledge in both the field of computer software and the applied technical field at the time of filing the relevant patent application.

When determining inventiveness of a claimed invention, one or more citations may be used as references. If two or more citations are used, it should be considered whether there is a motivation to combine the citations to achieve the invention based on an overall consideration of the relevance of the technical fields of the citations, the commonality of the problems to be solved, the commonality of the functions/effects of the citations and the teachings/suggestions of the citations. If there is a motivation, the claimed invention is deemed to lack inventiveness. Otherwise, the invention will be deemed to possess inventiveness.

In addition, the following considerations should apply in determining inventiveness: teaching away of the prior art, advantageous effects, unexpected effects, solving a long-existing problem, overcoming technical prejudices, and achieving commercial success.

VI. Conclusion  

As computer hardware is becoming more and more powerful, the number of computer software related patent applications will continue to increase. To establish better protection for inventions in this field, applications may include not only method claims but also computer software related claims. In this regard, having a solid understanding of the Examination Guidelines for computer software related inventions is the first step towards achieving comprehensive protection.

*Patent Agent, Assistant Manager of International Patent Division at Tai E International Patent & Law Office 

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