Article 21(1) of ROC
Article 21(1) of ROC Patent Law provides for unpatentable subject matters, which are ineligible for invention patent, including as follows:
1. New animal or plant variety, provided this limitation shall not apply to the process for cultivating new plant variety;
2. Methods of diagnostic, therapy or operation for diseases of human body or animal;
3. Scientific theories or mathematical methods;
4. Rules or methods of playing games and sports;
5. Other methods or schemes executable only through involvement of human deduction or memory abilities;
6. Invention interfering with public order, good custom or public health.
This article is amended from Article 4 of the amended old Patent Law, which provides ¡§the following items shall not be granted an invention patent:
1. Drinks, foods and hobbies with the exception of their manufacturing methods;
2. New species of animal, plant and microorganism with the exception of cultivating methods for new species of plant and new strain of microorganism;
3. Methods of diagnostic, therapy or operation for diseases of human body or animal;
4. Scientific theories or mathematical methods;
5. Rules or methods of playing games and sports;
6. Other methods or schemes executable only through involvement of human deduction or memory abilities;
7. The discovery of a new use of an article with the exception of chemicals and medicines.
An invention interfering with public order, good custom or public health, or the use of an invention product that is contrary to the law shall not be granted a patent.¡¨
Comparing the current law with the old law, it can be found that subject matters, which are excluded for protection by the law are fewer than before. As is known, the reasons why those subject matters are excluded from protection in many countries include as follows:
1) Moral considerations: Creatures can only be created by God rather than human being. Any diagnostic, therapeutic or operational methods will do good to or alleviate the pain of human body or animal so that the law should not allow legal monopoly for such should-be philanthropic matters, or enjoin or prohibit such methods to be mercifully executed on the human body or animal;
2) Usurpation of public wealth: Any scientific theories or mathematical methods merely relate to past, current or future truths, which should not be preempted or owned by the lucky finder;
3) Domestic protection: Since developed countries always retain superior techniques, if legal stands are equal to all parties involved, developing or underdeveloped countries might never have any opportunities to grow themselves for trying to keep pace with the technological standards in developed countries, which is contrary to the ideal of formation of a peaceful earth village;
4) Contrary to inherency of patent: According to German Patent Act, patents must be susceptible of industrial application. Under Article 2(1) of Japanese Patent Law, invention means the highly advanced creation of technical ideas by which a law of nature is utilized. In Article 19 of ROC Patent Law, invention means a highly innovative creation for a technical concept utilizing the law of nature. As such, rules or methods of playing games and sports, or other methods or schemes executable only through involvement of human deduction or memory abilities largely neither relate to technical ideas nor law of nature nor is susceptible to industrial application so that they are not patentable;
5) Social order maintenance: There is a Chinese saying that one kind of rice raises hundreds of kinds of persons. Talents of the human being need not necessarily be embodied on desired, so far as good social order is concerned, subject matters. In order to maintain good social order, it might be acceptable that an invention interfering with public order, good custom or public health shall not be patentable. Nevertheless, such matters normally vary with time. As an example, some twenty years ago, penis-erecting subject matters were regarded as falling into this category but are wonderfully good nowadays.
It is interesting to ascertain whether these exclusions are necessary or proper? How do they influence on the relevant society? What effects they have resulted in the specific society? Why do they remain provided in the law? When will they be repealed?
Summary of the present topics
It appears to be safe for us to utter that the more serendipities of nationals are exploited, the richer and stronger that country will be. 35 USC ¡±101 provides ¡§any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof¡¨ may be patentable. Judging apparently, the US law, comparing to other jurisdictions, e.g. those above-mentioned, appears to explain why the US can survive as the sole superpower today. Looking into the substance, it could be found that the difference between the US law and the other jurisdictions might be not so large as it appears in that the US patent practice, although not provided in Code of Patents, does prohibit the preemption of some subject matters, e.g. a mathematical algorithm. Nevertheless, under the US patent practice, it is nearly true that anything created under the sun by man is patentable. It is this philosophy which leads the US to go far and away the present status.
Article 1 of ROC Patent Law provides ¡§this Law is enacted to promote, protect and utilize inventions and creations in order to further the industrial development.¡¨ It is believed in the US that Judge Rich¡¦s opinion establishing that microorganisms were patentable and largely adopted by the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303 (1980) is the foundation for modern biotechnology industry. Specifically, only until scientists and companies have been assured that patents are obtainable on biotechnological inventions, can widespread investment in biotechnology research be followed. Encouragement is the mother of competition or hard-working perseverance. If specific subject matters are excluded from patent protection, it is apparent that the progressiveness of these subject matters in that country will be inferior. Thus, while the law can play the role of protecting the domestic industries on the one hand, the law can on the other hand become an obstacle to the advancement of the national technologies. Accordingly, it is important that the law is properly enacted, so is when the law should be amended to guide or shift the domestic industries, and so is how the law should be interpreted in an appropriate manner.
In sum, we would like to briefly scrutinize the above-described exclusions as follows, subject to more detailed analyses later:
1) Moral considerations: It appears that the present human beings have not been able yet to construct a world capable of harmoniously accommodating all kinds of current creatures. It might be thus agreeable and suggestible to prohibit the creation of creatures only until a perfect world has been established. If relevant apparatus or chemicals or pharmaceuticals have already been patentable, it would be strange that any diagnostic, therapeutic or operational methods should not be patentable;
2) Usurpation of public wealth: It might be unnecessary to have such limitation in that if any scientific theories or mathematical methods merely relate to past or current truths, they must fail to pass the examination of the novelty test so that they are unpatentable. If they relate to future truths, they also should be unpatentable in order to protect the potential human rights of the wide general public. Specifically, pure theories or mathematical methods can normally be exercised through mental thinking. Patenting such things will have at least two problems. First, a person is not free if he or she cannot spontaneously think and such basic thinking right should not in any way be invaded by any other including the law. Secondly, how can the inventor or the law find and prove who is thinking a specific scientific theory or mathematical method and in what way, they, inventor and the law, enforce the rights conferred by the law? It might be more accurate for us to consider these subject matters unpatentable because of the protection of basic human rights rather than usurpation of public wealth.
3) Domestic protection: Every protection must have an object. Nevertheless, it is not necessitated that the object is achieved by such protection. As an example, although Yue Loong Motors in this country was policy-protected for tens of years, Taiwan does not have successfully built a fully self-supplied motor industry till now. Is legal exclusion necessitated for domestic protection? When is the time proper for lifting the legal exclusion? Which kinds of legal exclusions are appropriate for a specific country? Is it good for a country to try to keep pace with the technological standards in developed countries in all aspects? Is it necessary for achieving the ideal of formation of a peaceful earth village to allow every country to have equal opportunities to try to grow itself in all aspects?
4) Contrary to inherency of patent: If we agree that the subject matter eligible for the patent protection must be susceptible of industrial application, should be creation of technical ideas and necessarily utilizes the law of nature, certain subjects, e.g. rules or methods of playing games and sports, or other methods or schemes executable only through involvement of human deduction or memory abilities, might need not be necessary to be included in the law as legal exclusions. As an example, computer program in the past has been held by examiners here trying every possible effort to reject as falling into this category but are well patentable today. Although law should be pliantly interpreted according to the changing time, it would be a good idea if we only need to explain what it is said under the law rather than need to interpret the law beyond the literal meaning of what is provided therein.
5) Social order maintenance: Internet pornography is a headache problem in every country. Although every government tries its best efforts to prohibit ¡§improper¡¨ contents from being disseminated, the government always feels despaired of the inundation of such improbity. What is encouraged needs not prosper. What is prohibited need not be eradicated. Is it a good idea to try to maintain good social order by statutorily prohibiting an invention interfering with public order, good custom or public health from being patented? If yes, how should these statutory prohibitions be interpreted? Are their interpretations subject to change with the time?
Brief Items to be Discussed for
Presenting Issues We Concern
l New creature v. its cultivating process
l Emphasized item---Methods of diagnostic, therapy or operation for diseases of human body or animal
l Scientific theories or mathematical methods
l Rules or methods of playing games and sports
l Other methods or schemes executable only through involvement of human deduction or memory abilities
l Invention interfering with public order, good custom or public health
Detailed Analyses for Respective
New creature v. its cultivating
The law provides that new animal or plant variety is unpatentable, provided this limitation shall not apply to the process for cultivating new plant variety. Strictly speaking, it is unclear according to the law whether a method for fostering a new animal is patentable. According to the official interpretation, since the proviso does not allow the protection of such method, it is excluded from statutory protection. Although the official reasoning need not necessarily be wrong, it would be more accurate for the law to provide ¡§anything relating new animal or plant variety, provided this limitation shall not apply to the process for cultivating new plant variety.¡¨
As is known, creatures on earth are facing extinguished and some of them have been extinct. If the human being cannot provide an environment suitably surviving all current creatures, are people well equipped to provide a good answer for their attempt to create new creatures? Is this a due aspect of Darwinian theory that ¡§natural selection favors the survival of some of these variations over others¡¨? Is it all right for us to assert that the standard should be decided by the human being since the world is primarily ruled thereby? Is it enough to effectively enjoin such attempt merely through such statutory exclusion? Does it sound reasonable that without disasters, it is hard for the human being to learn to be humble before the nature or the God?
According to the practice here, the microorganism is classified neither as animal or plant so that it is patentable. It has been found microorganisms can be extensively utilized to bring benefits to the mankind. It has well been recognized some seriously poisonous microorganisms can be greatly advantageous if they are carefully controlled and put into use. Is it reliable for the human being to assert that they can be ¡§carefully controlled and put into use¡¨? Are the questions listed in the preceding paragraph not applicable to microorganisms? Is the fact that the microorganism is not classified as animal or plant a just classification or just a classification error? Has the human being been in a stout position to answer what is the ultimate net profit for the human being to take the advantage of the utilization of microorganisms?
As a matter of fact, the plant variety is not in a situation without protection here. The plant variety can be subject to protection under Plant Seed Law. It thus is interesting to note while the plant variety per se is protected under Plant Seed Law, its cultivating method is protected under the Patent Law. Again, are the questions listed above not applicable to the plant variety? Is it fair for us to criticize the phenomenon self-examined by some western thinkers that it is refutable for the Western society to encourage consumption in order to chase the economic growth rate, since if the economic growth rate were not so high in the past, the environment on the earth need not be as bad as we have today? Is a new plant variety irrelevant to the creature equilibrium on earth? Do we have ample reasons to allow exclusion from statutory exclusions for plant variety?
Through discussions till now, it is not our position that microorganisms, biotechnology, or genetic engineering forming the infrastructure of developing new animal or plant variety should not be further developed. Whenever the scene that a person is tormented by an ailment is present, it naturally comes from one¡¦s mind why the human technology has not reached the level rescuing the human being from suffering from kinds of illnesses. Nevertheless, the following questions still deserve our at least one more thinking: Is it fair or good for human being, creature equilibrium on earth, earth, or even cosmos to grant the human being the opportunities to develop technologies for benefiting itself or its favorites including pet, new animal or plant variety? Are we confident enough to take that the developments of microorganisms, biotechnology or genetic engineering will necessarily go in the way we anticipate originally?
Emphasized item---Methods of
diagnostic, therapy or operation for diseases of human body or animal
The discussions here in this part must be very, if not the most, interesting part of this article. Taiwan has so many miracles. This provision and its official explanation must be two of them. Conventionally, whenever a Chinese doctor proceeds his work, he will conduct the following 4 procedures, i.e. observing the overall situation of the patient, smelling the odor issued therefrom, inquiring symptoms appearing thereon, and feeling the pulse the patient has. If the patent system were existent a long time ago, it is still impossible for the ¡§inventor¡¨ of these four procedures to obtain therefor patent protection since these procedures basically are conducted under the specific experiences the specific doctor has and relate only to mental thinking, ¡¥scientific theory (?)¡¦ or ¡¥methods or schemes executable only through involvement of human deduction or memory abilities¡¦ rather than to the utilization of technical idea, even if the quintessence of these procedures has been specifically recited. This is partly because without utilization of a technical idea, there is no concrete medium on which the invention idea can be explicitly embodied to be examined by the general public as to whether or not the invention does have been infringed.
Although it is not explicit in the patent law of every country that subject matters eligible for patent protection must be susceptible of industrial application or relate to law of nature rather than man-proposed solution, it is well-established that the patent system is something like a deal between the patentee and the authority that the patentee discloses to the general public its specific technique in exchange of its legal monopoly for a certain period of time. Certainly, it might be controversial whether the above-mentioned 4-procedure is not susceptible of industrial application since it can be utilized in the therapeutic industry. Also, it might be arguable whether it does not relate to law of nature since the 4-procedure is a law proposed by a talented person living in the nature. Nevertheless, although these 4 procedures relate to a kind of technique, they are not so relevant to technology, which is much linked to the science. If we agree that there exists a therapeutical science in the world, however, we are trapped in the literal mud again. It is believed that these 4 basic procedures are not patentable in that they merely relate to a rule of sequence for conducting the diagnostic, therapeutical or operational work but involve in no technological or scientific factor. How can we distinguish these unpatentable subjects from patentable ones? Is it safe for us to assert that a patentable subject must be something, which is to be executed by tangible article excluding the body of the human being?
If we agree to the above, what is unpatentable under this item would be ¡§theories or methodologies relating to diagnostic, therapy or operation for diseases of human body or animal,¡¨ just like the above-described 4 procedures, rather than ¡§methods of diagnostic, therapy or operation for diseases of human body or animal¡¨ since the latter do always represent patentable subjects, which will become more apparent through the following discussions.
The Intellectual Property Office has issued a book entitled ¡§Patent Examination Standards¡¨, in which some examples are illustrated as being unpatentable under this item. Since they are so interesting, we would like to quote them here. Nevertheless, since they are so ridiculous, we only want to list limited examples contained therein here for illustrations of our positions in order not to embarrass our government too much. According to this book, what are unpatentable under this item include:
1) Diagnostic methods for diseases of human body or animal: As an example for this category, a method for measuring the state of an internal organ of a human body or an animal by X-ray. We cannot understand why such method is unpatentable if X-ray is then-invented, or even known, some specific steps of using the X-ray are involved. The inventor deprives the general public of nothing. Taking that it is immoral to enforce such patent right when it can act for the benefits of the life of human body or animal is inconvincible in that every kind of patent can differently do good to the life of human body or animal. Although it is indisputable that subject matters under this item can directly decide whether a life can subsist or could healthily survive physically, it is equally true that responding to the world¡¦s economic growth, it is getting more and more believable that basic living demands are no more a problem in most part of the world. Rather, it is found to be very difficult to establish a human society in which the civilian will not abuse its rights and is much willing to respect other¡¦s rights by which constructing a civilized earth village is possible. As such, it is improper for us to assert that subject matters enabling the human being or animal to healthily survive physically are the most important ones in the world so that they should be specially treated in the law. Accordingly, we cannot agree with our governmental construction in this respect.
2) Therapeutical methods for diseases of human body or animal: As an example illustrated in the book for this category, a method of alleviating or inhibiting the sick condition of a patient by administering a drug or an injection or executing a physical healing procedure. As mentioned in the preceding paragraph, the only reason for this exclusion must be the immoral consideration, which, however, is never a competent excuse for such exclusion. Before the authority (Intellectual Property Office, IPO) can self-examine its position in this respect and then rectify and melt away such unfounded adherence by our soft advise here, we are ready to be entrusted such cases which were rejected by IPO, in order to struggle for patent protection for them with the governmental agencies by appealing them to the last organization, thereby causing the Great Judges in the Judicial Yuan to hold a meeting declaring either this item being enacted by mistake or erroneously construed by IPO;
3) Operation methods for diseases of human body or animal: As an example contained in the book, an anesthetizing method executed prior to proceeding an operation. It goes without saying that we cannot consent to such practice. As a matter of fact, there are a lot of cases relating to operation methods under the definition of this category, which have been ¡§carelessly¡¨ allowed by NBS (i.e., the former title of IPO) to be finally safely patented without opposition. Here, we would like to reject or nullify this enactment or official construction by citing ¡§opinions¡¨ quoted in the book. According to the book, the following subject matters are patentable:
(1) Operating knife (being an operational apparatus is not an operational method): If the fact that an operational method as defined by IPO is unpatentable owing to moral consideration is logically acceptable, we, after trying our best efforts, cannot understand why the recognition that an operating knife is patentable is logically viable before the same moral consideration. Starting from this point, we try here to rationalize the position of IPO as follows: What is defined as an operational method under this item is that which involves in no technical or technological attributes but pure theoretic descriptions relating to operation. If this is the case, an operation method must be something like the conventional Chinese 4-procedure, which we totally agree to be unpatentable. Accordingly, whenever there is a technical or technological attribute involved in an operational method, which should thus be patentable, but is, nevertheless, still mistaken to be unpatentable by IPO. From this short discussion, it appears to have been clear that either the enactment of the interpretation of IPO is erroneous;
(2) Pharmaceutical (being a substance is not a therapeutic method): Conventionally, whenever one of three elements, i.e. the starting material, the steps themselves and the end product, of a method is novel or patentable, the method is patentable. Could a reasonable person naturally take it for granted that while the pharmaceutical is patentable, a method reciting the use of that pharmaceutical is unpatentable? Do we need further words for a correct distinction here?
(3) Beautifying method for measuring the skin state of human body (is not a diagnostic method): According to Paragraph 1), a method for measuring the state of an internal organ of a human body or an animal by X-ray is unpatentable. Can a reasonable person tell apart the patentable beautifying method for measuring the skin of human body from the unpatentable measuring method disclosed in Paragraph 1) in their appearances or substances? Is it not clear there is an erroneous enactment or official construction?
(4) Methods for detecting/measuring structure or functional data of the organ in human body by computer (are not diagnostic methods): It should have been clear that a method of detecting/measuring structure or functional data of the organ in human body will be unpatentable according to the practice adopted by IPO through the above explanation. We, however, cannot understand or judge whether the IPO will always be loyal to its attitude. If this is the case, it is hard for us to understand why merely through the introduction of computer, methods for detecting/measuring structure or functional data of the organ in human body become patentable. What is the logic the IPO is taking? Is this taken simply in response to the world trend that the computer software is patentable? No matter what the logic the IPO is adopting, if it is correct, are we also right in construing that all what are originally unpatentable will be patentable through the introduction of the computer? For example, can we accept that scientific theories or mathematical methods will be patentable if the computer is introduced? Is the IPO unjustly treated here by such deduction?
It would thus appear that the authority here, IPO, has erroneously taken the position that this item, methods of diagnostic, therapy or operation for diseases of human body or animal, is unpatentable if it has not erroneously interpreted this item. If it has erroneously construed this item, the wording of this item should be revised in order not to trap IPO in a situation for erroneous interpretation. If this item were to be correct, the wording thereof might be ¡§theories of principles of diagnostic, therapy or operation for diseases of human body or animal.¡¨ In fact, if this item is deleted, no harm will be resulted in that theories of principles of diagnostic, therapy or operation for diseases of human body or animal are already unpatentable under the current patent practice.
Scientific theories or mathematical
Every law has its specific object. Normally, the law is to declare standards for or prohibitions in people¡¦s lives. Any one who does not act against the law generally has nothing to do with the law. Just like this ¡¥neutral¡¦ law, scientific theories or mathematical methods per se are ¡¥neutral¡¦ and do not have any ¡¥value¡¦ if not put in a practical application. ¡¥Neutral¡¦ subjects will not react with the ¡¥neutral¡¦ law. They must be incorporated with a specific practical application before they can react with the patent law to be patented. It thus clearly appears to us that scientific theories or mathematical methods per se must be unpatentable.
Rules or methods of playing games
Rules by themselves are neutral. They are not industrial before incorporated with a specific game or sport. Accordingly, it is by no means strange that they are unpatentable. Here, methods have two types, i.e. a physical method personally used by a user in a court for playing a game or sport and a method to be executed in a virtual place, e.g. a playing machine, for playing a game or sport. It appears that the former one is unpatentable in that it is not used for industry but is for body-building use. Thus, although it is not an unpatentable ¡¥neutral¡¦ rule, it does not involve an industrial practical application. So far as the latter one is concerned, it should be patentable if limited to be practiced in the playing machine directly related to a specific industrial application.
Other methods or schemes executable
only through involvement of human deduction or memory abilities
It should have been clear that if all what are involved in include only the method, theory, rule or scheme itself and the person proceeding it without any introduction of industrial apparatus, such method, theory, rule or scheme does not differ much from the unpatentable pure mental thinking. In this e-commerce time, even a business-doing method has already been patentable. Perhaps, this phenomenon might be similar to the requirement of, e.g. ¡¥post-activity solution.¡¦ Specifically, if any one of method, theory, rule and scheme in a claim is to be executed by an industrial medium, e.g. a computer, a computer program, a machine or any a tangible medium, such method, theory, rule or scheme should be patentable.
Invention interfering with public
order, good custom or public health
Everyone would like to live in a society with public order, good custom or public health. Nevertheless, people always live with diversified life pressures, which, however, cannot often be discharged in a regular channel. Furthermore, everyone might have their own definitions about public order, good custom or public health. Governments are established to protect rather than deprive the interests of citizens. It certainly goes without saying that public order, good custom or public health is related to public interests, which predominate over the private interests. Accordingly, we can only express here that if public order, good custom or public health have been prudently defined, citizens in a civilized society should be obliged to comply with such provision although their definitions are subject to variations with the time.
Claims we have
1) So far as moral considerations are concerned, if the law were to deprive any patent-related rights from the inventor of subject matters relating to any diagnostic, therapeutic or operational methods, the law should not classify them as unpatentable subjects, but provides they are unenforceable in view of moral considerations although patentable since they do meet with the requirements of a patent. In order to reconcile between the private and public interests, these limitations, if ultimately considered to be appropriate, should be limited to the situations where there are no alternative measures for the very same purpose;
2) As to usurpation of public wealth, it might be interesting to take notice of the case (In re Walter, 205 USPQ at 407 (CCPA 1980)) citation: ¡§if it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under 101.¡¨ It would appear that the rationale disclosed in this citation is applicable to not only any scientific theories or mathematical methods, but any rule, principle or scheme applied either in scientific or mathematical field, or in playing games or sports, or in subject matters involving human deduction or memory abilities;
3) As regards domestic protection, although it might be hard for a country to have an exact answer as to whether or how it does require legal exclusions, it would appear they are necessary for developing or underdeveloped countries in order to have basic opportunities to grow themselves for trying to keep pace with the technological standards in developed countries. Nevertheless, protection might not be the best way for growth. Although a specific country is always pressed by the international society to revise its law providing legal exclusions when its economic standards have reached some standards, it is advisable that that country should review by herself whether the time to revise its specific legal exclusion has come;
4) In regard to the concern contrary to inherency of patent, what is forbidden today is perfect for what is encouraged tomorrow. Words per se are not exact or precise so that the less words a law without ambiguity has, the better the law should be, just like what happens in the claim logic with which one skilled in the patent field is familiar. It would seem that susceptibility of industrial application is the most critical attribute of a patentable subject. Certainly, that which is susceptible of industrial application normally relates to a technical concept and often uses a rule of nature. If it is considered this might not be enough to exactly define what is patentable, we can, perhaps, newly define a patentable subject is one which is susceptible of industrial application and is not barely executed by a person without introduction of any medium independent of the executing person;
5) With regard to social order maintenance, humanity is a philosophy. How to correctly recognize humanity and then guide the development of humanity or allow it to soundly develop is a recondite, complicate and profound task. Competitions create prosperity but make the world more nervous. It is, however, not certain whether competitions cause irregularity more even or uneven. Although what is good is not always clear enough, it appears that there is no doubt that every one desires to have a good social order so that it should be acceptable that an invention interfering with public order, good custom or public health shall not be patentable, subject to our farsighted definition on what is referred to as such invention. The only thing before us would be how we can rest assured that the authority will interpret properly what such invention is?
6) As a mankind ruling the world, we might ask ourselves whether it is sinful for us in trying to temporarily or jointly play the role of the Creator to cultivate or modify new creatures being animal or plant. Since the Creator is wise enough to say nothing and provide no answer to any of our self-examined questions, we are destined to find answers by ourselves staggeringly. Where is the right pot for us to place our next step? Are we wise enough to neatly solve the pressures advocating attempts acting against the position that the mankind is created but not to create? Will we finally survive over all what we have done, are doing and will do? The Creator is always too cunning to convince us in advance what can be done and what cannot be done. Are these questions the proper topics a patent practitioner should or can express his concerns? Is the patent law a good medium for us to solemnly explore these questions?