Introduction
Principles for determining patent eligibility of computer software-related inventions
Comment


Introduction

There has been much discussion in the industry over the determination of patent eligibility for computer software, the difficulty of which arises partly due to the obscurity of the rules. Substantially revised and put into effect in 2021, Chapter 12 of Part II of the Patent Examination Guidelines ("Computer Software-Related Inventions") (the Examination Guidelines for Computer Software-Related Inventions), released by the Taiwan Intellectual Property Office (TIPO), adopts a more straightforward approach for the determination of patent eligibility of computer software-related inventions.

Additionally, in response to the increasing demand for computer software-related patent applications and examinations, the TIPO has prepared 20 case studies and compiled them into a brochure: Cases and Materials on IT Patent Examination (the Cases and Materials). Released on 6 January 2022, the Cases and Materials focus on the five major IT application fields and consist of 20 cases, including:

  • seven relating to artificial intelligence;
  • three relating to the internet of things;
  • three relating to blockchain;
  • three relating to cloud applications; and
  • four relating to big data.

Principles for determining patent eligibility of computer software-related inventions

The principles for determining the patent eligibility of computer software-related inventions are clearly defined in Chapter 12(3) of the Examination Guidelines for Computer Software-Related Inventions, effective in 2021 (Figure 1).

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Figure 1: principles for determining the patent eligibility of computer software-related inventions

Based on the above procedure, the first step is to roughly filter the inventions that are "obviously compliant" or "obviously non-compliant".

If the invention is difficult to categorise, the next step is to determine whether the information processing via computer software is realised by utilising hardware resources. Inventions that are "obviously compliant" include those relating to:

  • the control of machines (eg, the control of washing machines, engines, and hard drives); and
  • information processing (eg, information processing of heart activity signals, engine speed, or temperature values) according to the technical (eg, physical, chemical, biological or electrical) nature of the object.

On the other hand, inventions that are "obviously non-compliant" include those that do not utilise natural principles and those that do not stem from technical ideas. It should be noted that, as long as the claims involve the use of computers (eg, a central processing unit or any processor), the invention under determination will be temporarily classified as utilising natural principles and will not be considered "obviously non-compliant". In addition, by determining whether the information processing via computer software is realised by utilising hardware resources, this criterion refers to the construction of specific information processing devices or methods for information processing through the combination of computer software and hardware resources.

To illustrate the process of determining patent eligibility, a neural network system in case 6 of the Cases and Materials is cited as an example here. First, both claim 1 and claim 2 of case 6 do not perform the control of the machine or the accompanying handling of such control. Also, the information processing defined in claims 1 and 2 is not construed as information processing according to the technical nature of the object, so they are not "obviously compliant with" the definition of the invention. Secondly, the subject matter of both claims 1 and 2 is a "system" invention, which involves the use of a computer and implies a combination of hardware and software; therefore, it is not "obviously non-compliant". Lastly, when the claims of case 6 are judged by the element "whether the information processing via computer software is realised by utilising hardware resources", only claim 2 meets the definition of an invention.

Comment

The 20 case studies provided in the Cases and Materials not only elaborate on the process of determining the eligibility of an invention, but also detail the patent elements, such as:

  • the enablement of description;
  • whether the technical features described in the claim(s) have technical effects;
  • the clarity of the claim(s); and
  • how to determine the inventive step and non-obviousness of the claim(s).

Consequently, patent applicants of computer software-related inventions may refer to the Cases and Materials to facilitate and improve their patent applications.

For further information on this topic please contact Jason Chuang 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.