The New Chapter for Computer Software-Related Inventions in the Patent Examination Guidelines

Taiwan IP Office has revised the chapter for Computer Software-Related Inventions in the Patent Examination Guidelines (PEG). It became effective on July 1, 2021. This was an overhaul from its previous structure which had been in place since 2014. The section layouts of the 2014 version began with subject matter, specification, claims, and then inventiveness requirement. In the revised chapter (“Version ‘21”), by contrast, the section for enablement in the specification and sections for the indefiniteness and support of claims were moved to the forefront. They were followed by subsequent sections outlining a new test to determine patentable subject matter, the negative factors undermining inventiveness, and a series of exemplary claims with explanations. The core concept for Version ‘21 had been largely driven by and had taken into account cutting-edge technologies such as artificial intelligence and blockchain.

Revising Requirements for Enablement, Indefiniteness and Support of a Claim

The substantive benchmark for enablement remains the same, namely that a skilled artisan would be able to understand or reproduce the invention to solve a technical problem without undue experimentation in view of the ordinary level of the art. In Version ’21, more factors were provided to examine enablement requirements. In the case of a software-related invention, the description should sufficiently disclose the software or hardware toolkits that are specifically used to achieve the claimed function, such as the program languages, libraries, IDEs and neural network models.[1]

For drafting an apparatus claim, Version ’21 reemphasized that not all of the elements were structural and it is not necessary to define every element in terms of structures; this suggests that some elements in an apparatus can be defined by “functions.”[2]  In addition, a “data structure product” or a “computer program” was affirmed to be an eligible preamble for a patent claim, alongside the traditional computer readable medium (“CRM”) or computer program product. Examples of other patent-eligible preambles are included, such as programming models, libraries, support vector machines, neural networks, neural network models, etc.

A claim must find its proper support in the specification. Version ’21 additionally stressed that a case does not meet the support requirements (1) when a person who is skilled in the art (“PHOSITA”) would not know that there are alternative approaches to achieving the claimed invention not disclosed in the description or (2) when there are good reasons to believe that the specifically disclosed approach in the description cannot produce said claimed invention.[3]

Introducing a New Test for Determining Patentable Subject Matter

To more efficiently and accurately establish whether a claim for a software-related invention is eligible subject matter as per the Patent Act with respect to the definition of an invention, Version ‘21 has a a new two-step test. Please refer to the workflow in Figure 1 below for an illustration of the test.

The first question is whether the claimed invention is “obviously” patent-eligible. A claimed invention complies with the eligibility requirement if it either (1) specifically executes a control for a machine or a process associated with that control or (2) specifically executes information processing based on the scientific property of an object. A software-related invention immediately passes the test if it meets one of the above criteria.[4] The former case could be, for example, a control to operate a smart rice cooker’s function to automatically finish cooking a pot of rice in a set time or, in another instance, a use of serial collaborative operations of the shipping devices and drones to complete the delivery of packages, whereby the integrative control of a distribution system composed of multiple associated machines (shipping devices and drones) is involved. An example of the latter case, meanwhile, could be a calculation or re-processing of the raw data from a cardiac electrophysiology (EP) study which converts said data to the QRS complex in order to obtain diagnostic information.

If the answer to the first question is “obviously” no, a claimed invention is not patent eligible.  Typical non-eligible examples are man-made rules, mathematical methods, mental activities, and mere presentation of information, among others.

However, when the answer to the first question is ambiguous, the examiner should proceed to address the second question—whether the information processing of software is implemented with the use of hardware resources.[5] An affirmative answer will eventually lead to the conclusion that the subject matter is patent-eligible. The aim of the second question is to find out if there is a synergistically collaborative operation of software and hardware to build a particular information processing apparatus or method in accordance with the purpose of said information processing. An example of this is when a pending claimed invention recites hardware resources such as an input unit, a processing unit and a display unit, and uses the information processing of computer software to realize the function of generating a literature art piece, but does not recite a specific technical means or a step involving a synergistic interplay among the units (hardware elements). In the absence of such interplay, the claimed invention which is considered failed to build a particular collaborative system to process information is thus not eligible for a patent.

Figure 1: Subject matter test for computer software inventions 2021

Modifying the Factors Evaluating Inventiveness

Simple variation from prior art is one of the typical grounds for inventiveness rejection. Version ‘21 highlighted the various circumstances in which a claimed invention may be regarded as a simple variation.

Transformative use of a technical means from one area to another to achieve substantially the same functions and results (where only data being processed are different) would not meet inventiveness requirement.[6] To give a specific example, a claimed invention directs to a medical information search system comprising a device capable of searching for medical information according to a provided list. However, a prior art reference of a file search engine cites a device with the ability to search for documents according to a provided list. The claimed invention for a medical information search system would not be inventive over the prior art reference of a file search engine.

The recreation of known general knowledge in a computerized virtual space or in the combination of a virtual and a real environment is another example of simple variation.[7] This is not to exclude any VR, AR, MR or the like from patentability. However, it implies that a virtual application has to be more than the prior art. A racing game device comprising a particular processor which changes the possibility of a virtual vehicle to make a turn according to road conditions would not be inventive in view of a prior art reference for a racing game device that comprises a particular processor. In this case, the only additional feature in the claimed invention is the mechanism for cornering adjustment. But it is a generally understood knowledge in the field of automobile engineering that the insufficiency of grips due to a slippery road will cause a skid out of control. Hence, recreating such a known feature in a virtual racing device would not afford itself inventiveness.

Furthermore, if a different/added technical feature of the claimed invention makes no contribution to the prior art, it is regarded as a simple variation of the general knowledge.[8] This is more often seen in cases involving business methods. For example, a traditional e-commerce system is able to perform online payments based on the credit card authorization information entered by the customer; an invention is created for executing online payments based on the credit card information “pre-authorized” by the customer. Although the invention offers convenience by avoiding the need to re-enter credit card information before completing a second purchase, it is merely borne of a business idea without contributing to any technical effects. The pre-authorization limitation is thus a simple variation of general knowledge.

Lastly, while an unexpected result is a beneficial secondary consideration for evaluating inventiveness, Version ‘21 further emphasizes that this must constitute either a significant increase in efficacy or a new effect produced. Such a quantitative or qualitative improvement would be advantageous for bringing a claimed invention across the inventiveness threshold. However, the generally perceivable properties of convenience, speed, high accuracy, etc. should be achieved with the use of a computer. They are not unexpected results.