APAA e-Newsletter (Issue No. 24, August 2021)

Amendments to Patent Examination Guidelines in Taiwan of Computer Software Related Invention

Scott S.S. Chen, HuaDing International Law Office (Taiwan)

The Taiwan Intellectual Property Office (TIPO) published an amendment to the Patent Examination Guidelines for Computer Software Related Invention in Chapter 12 of Part II.  This amendment is effective from July 1, 2021.  Significant changes include the following aspects:

  1. Enhancing the regulations of enablement:

According to this amendment, in order to meet the requirement of enablement, the specification should “enable the skilled artisan to understand the content and make the claimed invention without undue experimentation”, which is consistent with the regulations in Section 1.3.1 of Chapter 1 (Part II).  Further, if a computer software related invention is defined by functions, the specification should disclose relevant technical contents, such as an algorithm, of the claimed functions to enable the skilled artisan to implement the invention.  An example is also given: “if a function is implemented by a specific software, a hardware tool, or an architecture (such as a specific Program Language, a Library, an IDE, a Tool Kit, a Database, a Neural Network Model, etc.), the specific element should be disclosed in the specification irrelevant to the element of being commercial or open sourced”.

  1. Relaxing the regulation for subject matter:

First, in Product Claim, the structural limitation is not strictly required to every feature in the claim.

Second, one of the currently-eligible subject matters of Product Claim: “Computer Program Product” is modified to “Computer Program (Product)”, thus, a computer program per se is also an eligible subject matter besides a product made of the computer program.  Furthermore, “Data Structure (Product)” is officially recognized as an eligible subject matter of Product Claim in this amendment.

This amendment further rendered the following instruction: “even if the claim title uses a term other than “Computer Program (Product)”, such as Programming Model, Library, Support Vector Machine (SVM), Neural Network, Neural Network Model, etc., the claim is also definite as long as the claimed invention can be understood substantially as a computer program (product) by referring to the specification, the drawings and the general knowledge at the time of filing.  The applicant is not requested to modify the claim title to “computer program (product)” or to add a specific term like “device” or “system” to the claim title”.

  1. Adding a new Section 2.2.4 – “Supported by the Specification”:

This section requested the examiner to determine, when reviewing an application, whether the written description of the specification is adequate to support full scope of the claim, based on the disclosure of the specification as well as the general knowledge at the time of filing.

More specific, even if a function defined in the claim can be implemented by a specific approach disclosed in the specification, the specification still fails to support the claim if the skilled artisan hardly finds any substitution not mentioned in the specification to implement the function, or the skilled artisan doubts, in a good reason, that none of the specific approaches disclosed in the specification can implement the function, the claim defined by the function should be considered unsupported by the specification.  If a function-defined claim is too broad to be supported by the specification, it usually means that the skilled artisan can only implement a partial scope of the claim according to the specification.

According to the last paragraph of this section, when the examiner issues a rejection to an application on a ground that the claim is unsupported by the specification (under Article 26(2) of Patent Act), the examiner may also assert that the specification of the application fails to meet the requirement of enablement (under Article 26(1) of Patent Act).

  1. Adding a new Section 3 – “Definition of Invention”:

In this chapter, a two-steps analysis is newly introduced to determine whether a computer software related invention meets the Definition of Invention.  Simply put, this guideline demarcates computer software related invention into three categories.

The first category obviously meets the eligible standard and is, (1) specifically executing a control to a machine or a control associated with a machine; or (2) specifically executing an information process based on the technical nature of an object.  For example, controlling a machine in accordance with a structure, an action, a composition etc. of the machine belonging to or associated with a controlled target, or controlling a machine to specifically implement its operation for the purpose of using the machine, or controlling a system composed of multiple relevant machines may meet the first requirement.  Besides, processing information (such as values, images, etc.) related to technical property of an object to derive further information, and executing the information process in accordance with the object’s status or a technical relationship between the object and a relative phenomenon may meet the second requirement.

The second category obviously fails to meet the eligible standard and is, (1) techniques not using rule of nature such as artificial arrangements, laws or human rules, mathematical formulas, human spiritual or mental activities and business method; or (2) a simple disclosure of information.

The third category belongs to a gray area between above two categories and scrutiny is further taken to examine whether the information process of a computer-software is specifically implemented with a hardware resource.  If a specific information processing technical solution is disclosed in the claim, the disclosure for a specific hardware resource may be omitted. On the opposite, even if the claim discloses a hardware resource, the eligible test is still negative if no cooperation of computer software and hardware resource can be found, or a specific information process or computation cannot be implemented.

In Taiwan, the examination of computer software related invention is handled in a case-by-case manner and different examiners may have different criterions, especially when a new guideline is issued.  Foreign applicants of computer software related inventions should consult with a Taiwan patent attorney to clarify grounds of potential rejection based on the new guidelines.