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Explanation of the Draft of Patent Examination Guidelines for Computer-Software-Related Patents

The Taiwan Intellectual Property Office (TIPO) held the 4th public hearing for the Draft of Patent Examination Guidelines for “Computer Software-related Inventions” on August 15, 2006, which marked the completion of the public hearing procedures for the said draft. The most significant differences between the old and the new Guidelines is that the New Guideline (NG) considers that if an invention allows a computer to realize the program of a plurality of functions, these types of command lines (not including program listings) that enable the computer to execute information processing are subject to patent protection. Program listings on the other hand, are still under copyright protection.

The NG describes the regulations for using “means plus function” method to draft the patent scope of a program, and the basic principles for the judgment of its technical features, with examples explaining what can be deemed as a “definite” invention. In order to deal with the rapid development of electronic business, the NG regulates that a business method per se though not patentable, a method that can directly or indirectly assist the hardware resources of a computer or network, to achieve certain business purposes or functions, still meets with the definition of an invention.
The NG emphasizes that a software invention must utilize hardware resources to realize the information processing of software, so as to be qualified as statutory subject matter of an invention patent. However, this point of emphasis raised queries during the discussion, such that a lot of patent attorneys expressed that there is no substantive meaning to discuss whether the said invention conforms to the “qualification for statutory subject matter of an invention.” Besides, the trend of software patent examination in international practice only focuses on whether a software invention possesses novelty and inventiveness, rather than whether it qualifies as statutory subject matter of an invention patent. Moreover, another difference with the regulations in European countries and the United States is that the NG repetitively demands that the scope of the patent must be drafted to specifically explain how a software utilizes hardware resources to fulfill the technical features of the intended technical solution. If the scope of the specification of a foreign application has to be rewritten to fulfill the regulations in the NG, it will not only reveal that Taiwan’s patent system fails to be in line with the rest of world, but also limits the scope of patent protection with unnecessary constraints, which will hinder the development of software industry in Taiwan. Regarding these problems, the TIPO will have further internal discussions and promulgate the new Patent Examination Guidelines for Computer Software as soon as possible.