Key points of draft amendment
The computer information industry is an important part of the high-tech sector. With the development of computer information technology, the use of computer software has permeated all aspects of human life. In October 1998 Taiwan launched its Examination Guidelines for Computer Software-Related Inventions to protect computer software-related inventions and promote the development of the computer information industries. Amendments to the guidelines were made in 2008 and 2014.
However, in recent years the development of technologies such as artificial intelligence (AI), the Internet of Things, big data, blockchain and autonomous driving has led to new types of applications and inventions in various fields. Patents covering such inventions are usually examined from the perspective of computer software or implementations thereof.
In 2020, to adapt to ongoing changes in technologies while continuing to meet the practical necessities of examination, the Taiwan Intellectual Property Office (TIPO) began amending the Examination Guidelines for Computer Software-Related Inventions again. On 24 February 2021 it held a public hearing to collect opinions from various sectors.
The main points of the draft amendment to the Examination Guidelines for Computer Software-Related Inventions are set out below.
Clear specification of guidelines for determining eligibility of computer software-related inventions
In the current Examination Guidelines for Computer Software-Related Inventions, the eligibility criteria are mainly based on the European patent criterion of having a "further technical effect" and the American patent criterion of "simply utilizing the computer". However, in practice, the determination process is unclear and inconsistent and the determination criterion of a "further technical effect" implies the existence of the concept of a partial inventive step.
In response to the diversification of computer software-related inventions, TIPO adopted an open approach to encourage innovation. After examining the invention eligibility standards of many other countries, Japan – which has a legal system relatively similar to that of Taiwan – was chosen as a main reference for the amendment. In the draft amendment, the determination criteria of possessing a "further technical effect" and "simply utilizing computers" have been removed from the guidelines. The eligibility of the claimed invention as the object of determination and related determination procedures and flowcharts have been clearly specified and illustrated with actual cases. In addition to stipulating what obviously meets or does not meet the definition of an invention, new examination rules for non-obvious determinations have also been added, making the determination criteria clearer.
Consistency of criteria for determining inventive step of computer software-related inventions
Corresponding to the general provisions of inventive steps in the current examination guidelines, new sections regarding the following have been added:
- "a person having ordinary skill in the art";
- "factors for denying an inventive step"; and
- "factors for affirming an inventive step".
Further, the following have been included as "simple change" factors for denying an inventive step:
- "technical field adaptations";
- "the systemization of methods of operation performed by humans";
- "the softwarization of functions performed by prior hardware technology"; and
- other related provisions in the Examination Guidelines for Computer Software-Related Inventions.
Many computer software-related inventions use the same or similar software, processes or AI models as previous inventions to process different types of data (eg, applying software that processes financial data to process medical data). This type of invention may be viewed by the examiner as a simple technical field adaptation and may not be considered an inventive step. Therefore, when an applicant applies for this type of technical field adaptation patent, it should include the following points in the specification to increase the chances of the invention being deemed an inventive step:
- the technical problems encountered in the integration of software and hardware when adapting to the technical field;
- the differences in hardware or software resulting from the adaptation and prior art; and
- the unanticipated technical effects resulting from such differences or adaptation.
Addition of new examination items and cases relating to AI
As the example cases in the Examination Guidelines for Computer Software-Related Inventions are no longer applicable to the aforementioned emerging industries, the draft has added many example cases involving AI and related fields as references for patent examiners and practitioners – for example:
- cases of patent eligibility and ineligibility;
- inventive steps; and
- inadequate disclosures.
The draft amendments to the Examination Guidelines for Computer Software-Related Inventions are considerably more extensive than the two previous amendments. At the 24 February 2021 public hearing, many patent practitioners strongly recommended that TIPO included more example cases (especially positive cases) in the guidelines, so that patent practitioners can have a stronger basis on which protection for their clients' inventions can be based, further promoting development of the emerging IT industry in Taiwan.
For further information on this topic please contact Eddie Wu at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected]). The Lee and Li website can be accessed at www.leeandli.com.