Amendments to Examination Guidelines for Computer Software-Related Inventions Taking Effect from 1 July 2021

06/30/2021

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Amendments to Examination Guidelines for Computer Software-Related Inventions Taking Effect from 1 July 2021

30 June 2021

I. Introduction

In recent years, the developments of technologies such as artificial intelligence (AI), the Internet of Things, big data, blockchain and autonomous driving have 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 TIPO recently announced that the amendments to the Examination Guidelines for Computer Software-Related Inventions will take effect from 1 July 2021.

II. Key points of amendments to the Examination Guidelines

The main points of the amendments to the Examination Guidelines for Computer Software-Related Inventions are set out below.

        i.         Clarification 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 US patent criterion of "simply utilizing the computer". However, in practice, the determination process is unclear and inconsistent and the determination criteria 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, the 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 amendments. In the amendments to the Examination Guidelines for Computer Software-Related Inventions, the determination criteria of possessing a "further technical effect" and "simply utilizing computers" have been removed from the Examination 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 example 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.

     ii.         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 (e.g., 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 having 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 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.

   iii.         Addition of new examination items and example cases relating to AI

As the example cases in the current Examination Guidelines for Computer Software-Related Inventions are no longer applicable to the aforementioned emerging industries, many example cases involving AI and related fields have been included in the amendments to the Examination Guidelines as references for patent examiners, patent attorneys and patent applicants. For example:

·          example cases of patent eligibility and ineligibility;

·          inventive steps; and

·          inadequate disclosures.

The flowchart for determining the eligibility of inventions newly added to the Examination Guidelines may give the patent attorneys or the patent applicants a clearer direction to defense the eligibility of a computer software-related invention upon receipt of a rejection for ineligibility.

The bar for determining the inventive step will remain substantially unchanged after the amendments to the Examination Guidelines taking effect.  We will keep a watch on the developments and provide further information.