July 29, 2021
The new Taiwan Patent Examination for Computer Software Related Invention is came in force on July 1st 2021. The new guidelines provide a better understanding for both applicant and examiner to the requirement for computer software patents in Taiwan. Please find the summary of this new guidelines as follow:
1. Principles of Invention
At the present practice, TIPO as European Patent Office judges on the eligibility of a computer software related patent application as an invention application which can produces a technical effect on the whole system.
However, this current guidelines are included some opinion of United Stated Patent and Trademark Office (USPTO) before 2014, which considerate whether the invention is “nothing more than the idea” of performing tasks on computer.
The New Guidelines introduce Japanese regulations, deleting the concepts “further technical effects” and “simple use of computer,” and instead determines eligibility with two steps:
a. Deciding whether the definition of an invention is met, including:
i. Those concretely performing control of an apparatus or processing with respect to the control;
ii. Those concretely performing information processing based on the technical properties of an object.
b. Determining whether “the information processing via computer software is realized through the utilization of hardware resources”:
For inventions that are unable to be determined through step a. above, the computer software in the invention should be examined for whether it fulfills the requirement that “the information processing via computer software is realized through the utilization of hardware resources”.
Moreover, even if part of the claims utilizes the laws of nature, if the invention as a whole does not utilize the laws of nature, the invention should be considered not utilizing the laws of nature. The technical characteristic should be taken into consideration to determine under which circumstances the invention could be seen as utilizing the laws of nature as a whole.
2. Amending Non-obviousness Related Regulations
The New Guidelines wherein the “simple change” should include:
a. Conversion between technical fields
b. Systemization of human operation methods
c. Software achieving the effects of prior hardware technology
d. Recreating the common knowledge at the time of filing within a virtual space generated by a computer
e. Application or modification in design based on the common knowledge at the time of filing
f. Features that make no contribution to the technical effects
3. AI-related examination
This new guidelines added description and cases for artificial intelligence (AI)-related applications which involve the eligibility, non-obviousness, and written description requirements. This description must highlight also highlighted the AI-related invention, which is applied in medical field, method claims should avoid directing towards diagnostic and therapeutic methods of human beings and animals for the application to be eligible.
4. Specification “object claims” which does not need to be structurally limited
The New Guidelines specify that the features of “object claims” which do not need to be structurally limited, but the functions should be defined and be achieved.
5. Stipulating the burden of proof for a generic placeholder and a means-plus-function language
For accelerated examination, Examiner conducts prior art search and comparison which are based on the interpretation from the claims which are comprised any apparatus or achieves or realizes the function steps. The applicant should provide proof which is illustrated the differences between the technical features of the claims and prior art, or provide reasons why the claims should be interpreted as function language, including the corresponding structure, material, or acts which are described in the specification and equivalents thereof.
6. Decision examples for each requirement
The New Guidelines comprised a number of decision examples, and many of them are provided in the guidelines from JPO.