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Determination on Patentability of Business Methods
According to Taiwan's Patent Examination Guidelines, "business methods" themselves are human-made processes such as social laws, rules of thumb and economic laws, not an invention accomplished by utilizing the laws of nature, and thereby, not in compliance with the definition of "invention" provided in the Patent Act. However, a business method might be considered in compliance with the required definition of invention if the business method is implemented by utilizing software-related technologies or hardware resources and if the invention as a whole has a "technical nature", for instance, overcoming a technical difficulty or resolving a problem by utilizing means of the technological field, thus producing technical results as a whole. Therefore, when a business method invention seeks patent protection, the focus should be on the patent eligibility of its technical means for implementing the business method, and the technical nature of the invention as a whole should be conveyed through the description of its claims.
In its 2016-Xing-Zhuan-Geng(1)-No.2 administrative judgment rendered on October 27th, 2016, the Intellectual Property Court (hereinafter the "IPC") held that improvements to a naked business method, though not involving any improvement to software-related technical means, might be a patentable subject matter.
The patent application in this case is titled "Method of managing map traveling information", with its claim 1 reading as follows:
A method of managing map traveling information, which is used to record the travel process of each tour on a website, comprising: selecting a plurality of spots from the travel process, displaying on a map, and forming a tour route; setting up a link of each scenic spot; and clicking the link to each of the scenic spots, and inputting related information of each of the scenic spots, wherein the related information comprises an introduction of the scenic spots, at least a relevant website and a comment to the spots, and any visitor of the website must have their identity verified before commenting on locations.
According to the IPC's above judgment, which was delivered after the disputed case was remanded by the Supreme Administrative Court, the disputed patent application involves a graphical user interface or behavior relevant to the utilization of web services and the sequence in which the webpage runs has been illustrated in drawings included in the specification of the disputed patent application. From the perspective of web design field, said specification has described the problem to be solved by the claimed invention is to provide a method of management, which is an improvement to a business method, not to make any improvement to computer software-related technical means. The IPC thereby revoked the decision made by Taiwan Intellectual Property Office (hereinafter "TIPO") and ordered the TIPO to reexamine whether the claims of the disputed application convey any specific function and a complete workflow to achieve said function. The court also asked the TIPO to consider whether it is possible to provide the applicant with an opportunity of amendment, so that the applicant may redraft the claims as an article defined by its function in order to illustrate the protection scope of the patent application.
The above judgment seem to support the patentability of improvements to a business method though not involving any improvement to computer software-related technical means, paying no attention to whether the technical means to implement said business method are of a technical nature. This might be because, at the TIPO's examination stage and in the IPC's previous trial, the only issue considered was centered around the clarity and definiteness of the "means-plus-function" claims of the disputed patent application; the TIPO and the previous tribunal of the IPC both held the view that since there is no mention of the corresponding structure, material or steps of said functions in the specification, the disputed patent application failed to meet the clarify and definiteness requirements. The Supreme Administrative Court, however, vacated the IPC's judgment of the previous instance in 2016-Pan-No. 149 by indicating that the current Patent Act does not regulate that means-plus-function claims "have to" be supported by a detailed description of corresponding structures or steps to achieve the mentioned functions in the specification so as to satisfy the criteria of definiteness. Neither the decision of the TIPO nor court judgments that have been delivered so far have touched on the issue of the "patent eligibility" of the subject matter of a business method invention. All of them restricted their discussion to whether the disputed patent application satisfies criteria of definiteness, which explains why this judgment rendered by the IPC after the case was remanded by the Supreme Administrative Court merely ordered the TIPO to reexamine the definiteness of the disputed patent application.
In fact, if the invention disclosed in the disputed patent application merely refers to improvements to a "naked" business method, it is doubtful whether the subject matter satisfies the definition of "invention" provided in the Patent Act. If it fails to meet the definition of invention, there might be no need to discuss the criteria of definiteness. In the abovementioned judgment rendered after the disputed case was remanded by the Supreme Administrative Court, the IPC ordered the TIPO to consider whether it is possible to provide the applicant with an opportunity to amend the claims by specifying "means plus function" -- this seems to imply that doubts on patent eligibility could be cleared by making amendments to claims. In any case, whether such amendments will go beyond the scope defined by the originally-filed specification, claims or drawing is another matter to be discussed.