Software Patents (Question 29~33)

Question 29. Is there protection available for software patents?

Answer: Yes.


Question 30. If protection is available for software patents, what subject matter is allowable (e.g. post processing result, etc.)? Are there any particular claim-drafting formats that are preferred? If so, are there any available examples of accepted claim language?

Answer:  Anything acceptable in the US is generally allowable in Taiwan except those identified in the following.


Question 31. What is the average amount of time necessary to secure a software patent as opposed to an electrical (hardware based) patent?

Answer:  Generally speaking, both of them are officially set to receive a first office action between 21 and 27 months from the filing date although it is not very exact.


Question 32. If software patents are not allowed, are there acceptable work-arounds? For example, in the U.S., the following is an acceptable claim "A computer-readable storage medium storing a set of instructions for execution by a general purpose computer to [do something], the set of instructions comprising:" [recite "code segments", each code segment having a different function].

Answer:  The forbidden one is "A computer program comprising:" since it is held that a computer program should be protected under the copyright law.


Question 33. What is the standard for patentability (e.g. obviousness, problem-solution, advantageous effect)?

Answer:  The standard for patentability for software patents still includes novelty, non-obviousness and utility.


Expedited Prosecution (Question 34~38)

Question 34. Are there procedures in your country available for expediting prosecution?

Answer:  Yes.


Question 35. If so, what are the costs and procedures required?

Answer:  Our service fees depend on how lengthy the evidencing paper is. Since expediting prosecution applies to the published application only, we need to petition an early earlier publication by paying the official fee NT$1,000 (US$33) if the expedited prosecution is desired at an early stage immediately after filing a patent application. Our service fees for petitioning an early earlier publication will normally be NT$3,000.


Question 36. Is expedited prosecution limited to certain situations and/or types of technology?

Answer:  Article 39 provides for Preferential Examination as follows:

"If an invention patent application is commercially practiced by a non-patent applicant after earlier publication, the patent-dedicated office may preferentially examine it upon petition.

The petition made in the preceding paragraph shall be accompanied with relevant evidencing paper."

From a practical view, how likely is it that expedited prosecution will be granted? A: It is mandatory to be granted.

What is the actual time gain (on average) as compared to "regular" prosecution? A: It depends on how soon we petition the expediting examination. The preferential examination is officially set to be completed in 6 months but the official promise is not very reliable.


Question 37. What are the potential disadvantages?

Answer:  There is no predicted or detectable disadvantage.


Question 38. Do you believe that requesting expedited prosecution is worthwhile?

Answer:  If an earlier patent is desired or really necessary, it certainly is worthwhile.