Introduction
Examination under article 21 of Patent Act
Examination under articles 26-1 and 26-2 of Patent Act
Examination under articles 22-1 and 22-2 of Patent Act


Introduction

The term "the metaverse" relates to a digitalised virtual world. Various new business methods or models are bound to emerge during the construction of the metaverse and in specific application scenarios. Due to the digitalised nature of the metaverse, related business methods related thereto are generally realised by a combination of information and network technologies and computer software and hardware. Thus, such business methods as a whole are technology-based. For example, they may solve a technical problem using technical means and bring about certain technical effects. Accordingly, there is a possibility that these business methods may be eligible for protection by patents.

Regarding the patenting of metaverse-related inventions relying on business methods, Part II, chapter 12 of the Guidelines for Patent Examination issued by the Taiwan Intellectual Property Office sets out some special regulations governing "computer software-related inventions". The examination of software-related inventions can generally be categorised into the following three types.

Examination under article 21 of Patent Act

Article 21 of the Patent Act states: "Invention means the creation of technical ideas, utilizing the laws of nature." Accordingly, creations involving neither utilisation of the laws of nature nor technical ideas fail to meet the above definition of inventions. Part II, chapter 12 of the Guidelines provides the flowchart shown in Figure 1 for the determination of patentability.

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Figure 1: patentability flowchart

According to the flowchart, a software-related invention may be deemed as obviously failing to meet the definition of "invention" if it is:

  • an artificial arrangement (eg, game rules);
  • a mathematical formula;
  • a business method; or
  • a simple disclosure of information.

A software-related invention would be deemed as obviously meeting the definition of "invention" if it specifically implements the controlling or processing of equipment.

Where neither of these situations applies (ie, the invention neither obviously meets nor obviously fails to meet the definition of "invention"), a determination should be made as to whether information processing with computer software is realised using hardware resources. In other words, it should be established whether the claimed software-related invention proposes, according to the purposes of information processing, a specific information-processing device or method by cooperative operation of computer software and hardware resources.

As such, a metaverse-related invention tends to be excluded from the definition of "invention" if it involves only a simple business method. To ensure the definition of "invention" is satisfied, it is thus advisable to elaborate the following in detail when preparing the specification:

  • the claimed business method;
  • the cooperative operation of the software and hardware resources; and
  • pertinent technical means.

Examination under articles 26-1 and 26-2 of Patent Act

Articles 26-1 and 26-2 of the Patent Act set out the following provisions:

The description shall fully disclose the invention in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art.

The claims shall define the claimed invention, and more than one claim may be included therein. Each claim shall be disclosed in a clear and concise manner and be supported by the specification.

Inventions claimed in metaverse-related patent application are often defined with functional limitations. To ensure sufficient disclosure in the specification so that a person ordinarily skilled in the art is enabled to comprehend and carry out the claimed invention, the specification should fully describe the technical features associated with the realisation of the claimed functions – for example:

  • algorithms (represented by flowcharts without the full disclosure of codes); and
  • interrelationships between various software modules and hardware components (eg, functional block diagrams).

Taking an information-processing system implementing a business method as an example, the specification should include descriptions to clarify how the business method is realised by computer software or hardware.

The protection scope of a patent application is defined by its claims. Metaverse-related software inventions may cover subject matter such as:

  • devices;
  • systems;
  • computer programs (products);
  • computer-readable media (eg, hard disks and floppy disks); and
  • relevant methods.

It is suggested that the technical features recited in the claims should define the interconnections between various software modules and hardware components as well as corresponding functions in a manner supported by the specification.

Examination under articles 22-1 and 22-2 of Patent Act

Articles 22-1 and 22-2 of the Patent Act set out the novelty and inventive step requirements for patents, respectively.

The novelty requirement for software-related inventions is similar to the general novelty provisions stipulated in the Guidelines. A software-related invention is deemed as satisfying the novelty requirement unless it was disclosed in a printed publication, publicly exploited or publicly known prior to the filing of the patent application.

The inventive step requirement is also in line with the general inventive step provisions stipulated in the Guidelines, with additional requirements concerning:

  • "a person ordinarily skilled in the art";
  • "factors negating inventive step"; and
  • "factors affirming inventive step".

Meanwhile, the following, as stated in the Guidelines in connection with software-related inventions, are classified as "simple modifications" that would not constitute an inventive step:

  • "transfer of technical field";
  • "systematisation of operational procedures carried out by humans"; and
  • "softwarisation of the functions performed previously by hardware technologies".

For instance, a large number of software-related inventions propose the utilisation of software, operational procedures or artificial intelligence models similar or identical to those disclosed in prior art references for processing different types of information (eg, using software designed to process financial data for medical data processing). Such inventions may be deemed by the examiner as a simple transfer of technical field and thus lacking an inventive step.

For metaverse inventions relying on the utilisation of software-related technologies to implement business methods, it should be noted that references introducing applications of the same software technologies to different business methods may be selected as prior art when determining the inventive step of the claimed inventions. The patent application may be deemed as a simple modification of the business method disclosed in the prior art reference, and thus lacking an inventive step. It should also be noted that "commercial effects" generated by the claimed business method are, in principle, not a beneficial technical effect. However, should the realisation of the business method in the claimed invention involve technical considerations or overcome technical difficulties to the extent that it makes a patentable contribution to the technical effects, the aforesaid commercial effects would be taken into consideration during patent examination.

Therefore, when an applicant is to patent such transfer of technical field, it is advisable for the specification to elaborate in detail:

  • the technical problems encountered when the software and hardware are combined in the transfer of technical field;
  • resultant distinctions from the disclosures of prior art references in terms of the software and hardware; and
  • the expected effects brought about by such distinctions or transfer.

Doing so gives the claimed invention an increased chance of being deemed as having an inventive step.

For further information on this topic please contact Eddie Wu, Shon Chen or Yan Lin at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected], [email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.