Newsletter
Analysis of Rejection/Objection reasons of AI-Related Patent Applications in Taiwan
The Intellectual Property Office (IPO) published in December 2019 a report pertaining to the statistical status and analysis of rejection/objection reasons of AI-related patent applications (https://www.tipo.gov.tw/tw/dl-253935-66daeddeddc741a19ef1af79b94e0d36.html), in which applications filed in 2018 were analyzed and the IPO’s suggestions were provided.
Based on the report, in a number of 517 applications that have received at least one office action, around 4% were objected to for not meeting the definition of an invention; around 12% were objected to for failing to provide clear and sufficient disclosure in the specification; around 37% were objected to because of claim indefiniteness; and up to about 78% were rejected on the grounds that they were not novel or inventive (the overall percentage is over 100% since one office action may include more than one objection/rejection). The IPO’s analysis is summarized as follows:
1. Definition of an invention (Article 21 of the Patent Act)
To meet the definition of an invention, a claim needs to possess technical characteristics. That is, the means used to solve the problem must involve technical means in a specific technical field.
"Business" and "Mathematics" of themselves are not eligible patent subject matter, and an application involving solving a business problem rather than a technical problem using mathematics (for example, analyzing business data using deep learning techniques) is very likely to be objected to on the ground of failing to meet the definition of an invention, and it would also be difficult to overcome the objection by amendments or arguments.
Since artificial intelligence (for example, a neural network) usually involves mathematical algorithms/calculations, and since a computer is usually the carrier of the mathematical algorithms/calculations, as a result, whether the field of artificial intelligence application is described in the specification—and what technical functions can be closely combined with the artificial intelligence—has become an important basis for the patent examiner to judge whether a patent application possesses technical characteristics.
The IPO indicates in the report that if the technical embodiments or the connections between the artificial intelligence and specific technical applications can be described in detail in the specification, it will be easier for a patent application to be determined to possess technical characteristics. Even if the patent application is objected to during the prosecution on the ground of not meeting the definition of an invention, there are still chances for the applicant to overcome the objection by making amendments and/or arguments.
2. Clear and sufficient disclosure in the specification (Paragraph 1 of Article 26 of the Patent Act)
Paragraph 1 of Article 26 of the Patent Act regulates the applicant's disclosure obligation. The content of the specification must be clear and sufficient to enable persons having ordinary skills in the art to implement it. In practice, some applicants choose to intentionally omit some technical details in the specification, which violates the spirit of this disclosure requirement.
If the objection of the ground of disclosure requirement is raised by the patent examiner, the IPO recommends that the following methods be used to remedy the objection: (i) explain, based on the disclosure of the specification, how a technical feature deemed to be insufficiently disclosed can be derived from the specification; or (ii) delete a corresponding technical feature from the claims, because whether the disclosure of the specification is sufficient depends on the inventions claimed; for inventions not claimed, whether the description is sufficient or not is irrelevant.
According to the IPO, the best approach is for the applicant to provide clear and sufficient descriptions in the specification at the time of filing.
3. Claim definiteness (Paragraph 2 of Article 26 of the Patent Act)
The IPO indicates in the report that the disclosure requirement for the claims is different from that of the specification. Although the specification, drawings and common knowledge at the time of filing can be referred to in the interpretation of the claims, the claims are a legal piece of text, and their essence differs from that of the specification, which is a technical document. The requirements for "definiteness" of the claims are much stricter than those for the specification. When a patentee enforces its rights in the future, the claims must be interpreted word-for-word. The claim language should be clear enough for persons having ordinary skill in the art to understand without ambiguity, solely based on the claims.
According to the analysis of the IPO, of the 190 cases that were objected to on the ground of "not complying with Paragraph 2 of Article 26 of the Patent Act," three were still determined to be ambiguous after the application filed a response. The common feature between the three applications is that the applicants did not amend the claims afterwards. The IPO believes that the objections based on Paragraph 2 of Article 26 of the Patent Act can be easily overcome through amendments. Nevertheless, the IPO states that it is comparatively difficult to overcome the problem of ambiguity solely through making arguments.
Therefore, if the applicant receives objections based on Paragraph 2 of Article 26 of the Patent Act, the IPO recommends that the applicant should make claim amendments by adding or adjusting technical features if he/she considers that the objections are reasonable; and if the applicant disagrees with the objections, he/she should discuss them with the patent examiner by phone.
4. Novelty and Inventive steps (Paragraphs 1 or 2 of Article 22 of the Patent Act)
The IPO analyzed 405 applications in which non-novelty or non-inventive rejections were raised, 139 applications of which were responded to or amended by the applicants. However, 39 applications were still found to be non-novel or non- inventive after the applicant submitted arguments or amendments.
In the 139 applications wherein the applicants submit arguments or claim amendments, it was found that the applications usually receive a notice of allowance if the applicants incorporate allowable dependent claims into the independent claims, or delete claims which are deemed to be unpatentable by the examiner. Some applicants chose to make arguments solely because they considered the examiner’s opinions to be incorrect. However, only half of those applicants were able to persuade the examiner and receive an allowance decision.
In addition, some applicants chose to incorporate technical features disclosed in the specification into the claims. Among 36 applications that adopted this approach, 30 applications received an allowance decision. The IPO indicates that, if an applicant can incorporate some technical features from the specification into the claims, even if the number of technical features incorporated is very few, the chance of an allowance decision can be greatly improved.