TIPS^®  Taiwan Intellectual Property Special

 China Updates

Important Amendments Concerning Computer-related Inventions in the Patent Examination Guidelines

1. Broadening the protection of the objects of computer-related invention patents
Computer communication technology has been growing rapidly in recent years. As a result, there are more and more computer-related patent applications internationally, to further protect the intellectual property rights. Under the criteria of examination of the old PEG, computer inventions were normally being considered as within the scope of rules and methods for mental activities, which is a disadvantage to the development of the patent protection of computer-related inventions. The new PEG regulates that if the contents defined in a claim include rules and methods for mental activities as well as technical features, the said claim as a whole is not rules and methods for mental activities, and Article 25 of the Patent Law shall not be used as grounds to exclude the possibility for an applicant to obtain patent rights. An invention patent application involving a computer program shall be patentable subject matter under the following conditions: if the execution of a computer program by the solution of a computer-program-related invention, intends to resolve technical problems; and if the operation of a computer program on a computer to control or process external or internal target reflects technical means that comply with the law of nature; and if from which technical effects that conform to the law of nature can be achieved.

The amendment in this regard is an advantage to applicants, because it actually broadens the subject matter protected by a computer-related invention patent. Hence, a computer invention patent may be granted, regardless whether it contains rules and methods for mental activities, as long as the patent document illustrates that its solution is a technical solution that can solve technical problems and achieves technical effects. It is also worth mentioning that the draft of a computer-related invention patent requires higher drafting quality, so it would be in an applicant’s best interests to entrust the applications to a professional patent agency.

2. Clarifying the drafting regulations for computer-related invention patents
The new PEG clarifies the regulations for the drafting of apparatus claims and their corresponding process claims regarding computer-related invention patent applications by stating that if the claims for an apparatus are drafted entirely in accordance with the procedures of a computer program, and totally agree with each and every procedure of the said computer program, or totally agree with the process claims that reflect the procedures of the computer program, then all the components of the claims for the apparatus correspond with each procedure of the computer program or process claims. The drafting of patent application documents is both the prerequisite and foundation of patent protection enforcement. Thus, applicants should pay special attention in this regard.
 

China Updates