Patent

SOFTWARE AND BUSINESS METHOD INVENTIONS FROM CHINA & TAIWAN’S PERSPECTIVE

An invention, as indicated in China’s Patent Law, means “any new technical solution relating to a product, a process or improvement thereof.” To constitute a complete technical solution, an invention must pass a 3-pronged test, namely: to solve a technical problem by a technical measure to produce a technical effect. Algorithms and business methods are generally deemed not able to satisfy the 3-pronged test, and therefore, they are non-patentable “rules and methods of mental activities,” which do not constitute patentable subject matter. However, they are not absolutely non-patentable as long as the contents of a claim include not only rules and methods for mental activities, but also technical features. If it is a solution using computers to implement and interrelating with computers, it may be able to meet the subject matter requirement. The difficult task for a software-related invention is not to meet the “technical means” prong, but to satisfy the “technical problem” and “technical effect” prongs where most rejections are likely to occur.

In China, both method claims and article claims are acceptable for a software or business method invention. For a method claim, means-plus-function language appears to be more helpful and efficient. It is because
methods standing alone, without specifying their interaction with the corresponding apparatuses, are considered non-patentable “mental activities.” But this makes it more difficult to catch infringers of method inventions, because the patentees will need to investigate both functions and steps that the potential infringing devices perform. As to an article claim, it should be viewed as a functional module architecture that realizes the technical solution provided by the software invention, but not a claim to protect the physical device itself. This may explain why China remains the strictest jurisdiction of the world with regard to the availability of patent protection for business methods and software inventions.

In Taiwan, a technological art requirement also needs to be satisfied to patent a software-related or business method invention. The Taiwan Examination Guidelines for Computer Software-Related Inventions adopted a portion of the European Proposal Directive, which requires a software-related invention to possess technical characters. Specifically, if further technical effects that go beyond the normal physical interactions between the program and the computer can be produced, then the means for resolving the technical problem is considered to involve technical characters.

Although like China, a machine must be used to carry out method invention, in Taiwan, like the U.S., the allowable scope of article claims includes apparatus or system claims, computer readable medium claims, computer program product without regard to their external forms, and data structure products that causes hardware to execute. This significantly provides broader protection for software patents. With regard to method claims, like China, business methods per se inherently are not patentable. But to draft a method claim, both means-plus-function and step-plus-function language can work well as long as the claim is not merely a presentation of information that possesses no technical features.

After the U.S. Court of Appeals for the Federal Circuit (CAFC) decision In re Bilski, Fed. Cir. in October 2008, to patent a software-related invention before the USPTO, the software or business method is required to either be tied to a machine or to transform a physical object to a different state or thing. From the branch of “tie to a machine” test, it seems to be getting closer to the patentable requirement in both China and Taiwan. However, the CAFC rejected use of the technological arts test, which was deemed ambiguous and ever-changing for determining patent eligibility. While both China and Taiwan look to technological arts involved in a software invention, China requires every part of the 3-pronged test be satisfied in order to be patentable; Taiwan, on the other hand, appears to be more flexible in applying the test and deems whether a further technical effect can be produced when viewing the invention as a whole is more important than analyzing each part of the test.