Deep & Far Newsletter 2014 ©
Summary of the amendments of Taiwan Patent Examination Guide on Part II, Chapter 12, Computer Software Related Invention - I
Yu-Li Tsai, Patent Attorney
¡½ Bachelor of EE from National Taiwan University
¡½ Master of Telecommunications from National Taiwan University¡½ IP Master from New Hampshire Law School (Franklin Pierce
On January 15, 2014, the Ministry of Economic Affairs issued the amended Patent Examination Guide for computer software related inventions. The amendments became effective on January 1, 2014 and are summarized as follows:
1. Invention Definition
To judge whether a claimed invention meets the definition of an invention, one must consider the contents of the claimed invention, rather than the recitation form of the claims, so as to identify whether the invention as a whole is of a technical nature. If only a portion of the claimed invention does not utilize the laws of nature, one cannot assert that the claimed invention does not meet the definition of an invention.
The judgment of the above is based on the technical features recited in the claims, but due to the special nature of a computer software related invention, one usually needs to refer to the contents of the specification in order to understand the essential meaning of each feature of the claims. Therefore, during examination, one conducts a synthetic judgment by examining the invention recited in the claims as a whole and referring to the specification, drawings, and common knowledge at the time of filing to consider as a whole the problems intended to be solved by the invention and the technical means for solving the problems with reference to common knowledge at the time of filing.
If the claims do not specifically recite essential technical features, but after referring to the specification, drawings and common knowledge at the time of filing, the examiner can find that the invention as a whole is of a technical nature but is not something simply based on the laws of nature, mathematical formulas, business methods, artificial rules, information disclosure, or aesthetical creation, etc., then the examiner will notify the applicant to make a response or amendments on the grounds that the claims are unclear. If the examiner finds that the computer software or hardware plays a significant role in the invention, but the specification does not clearly and sufficiently disclose this, for example, or how the software and the hardware cooperate, how the problems are solved, this raises the issue that the skilled person in the art will be unable to implement the invention according to the specification.
Whether the claims of a claimed subject matter meet the definition of invention shall not be directly judged simply by the recitation form of the subject matter. If the subject of the claims is ¡§architecture¡¨, ¡§scheme¡¨, ¡§technique¡¨, ¡§signal¡¨, etc., and it is unclear whether the subject matter intended to be protected by the claims is an article or a method, the examiner will require that the applicant amend the subject or designation of the subject matter. If the designation of the subject matter is ¡§data format¡¨ or ¡§packet¡¨ etc., the examiner will judge whether the claimed invention discloses the interaction of the data structure and the algorithm steps and indeed is of technical nature. If the technical nature is found, it is determined that the designation of the subject matter (e.g. the data format per se) is inconsistent with the substantive contents of the claimed invention (e.g. the method or product applying the data structure) to cause the claims to be unclear, and the examiner will require that the applicant amend the designation of the subject matter as ¡§data structure product¡¨ or a similar one and shall not directly consider the subject matter as mere information disclosure in the sight of the designation of the subject matter. In addition, if the designation of the subject matter is ¡§a type of computer program¡¨, and the claimed invention as a whole meets the product claim definition for a computer program, the examiner can directly deem the claim as a product claim of a computer program and no amendment will be required.
2. Examination Guide for ¡§User Interface¡¨ and ¡§Data Format¡¨
An image design configuration of a user interface is designed to attract a user while the layout or arrangement of components on a screen is usually not included in the technical aspects. In addition, the information contents including a short message displayed on a device are also not of a technical nature. Even if the message urges the user to take action on the device, the message is still mere information disclosure. However, if the information disclosure interacts with an algorithm to produce a technical effect, for example, increasing the accuracy of the device or decreasing the burden of recognition as the user manipulates the computer, so as to produce a technically more efficient human machine interface, it thus has a technical nature and meets the definition for an invention.
A data format per se is merely a static memory configuration and has no technical nature; if one discloses only the content information or format of the data format without specifically specifying how to utilize or implement it, it is mere information disclosure. Regarding an interactive combination of the computer system and the data format, if one only describes steps as to how to collect the data, it is still mere information disclosure even though the data may include a special format. However, if the data format (or data structure) interacts with the computer software or hardware to produce technical effects, for example, increasing data processing or storage efficacy, reinforcing security, etc., it thus has a technical nature and meets the definition of invention.