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Overview of the Draft Amendment to the Patent Examination Guidelines for Computer Software-Related Inventions

The computer information industry is an important part of high-tech industry. With the development of computer information technology, the use of computer software has permeated all aspects of human life. To protect computer software-related inventions and promote the development of the computer information industries, Taiwan launched its Examination Guidelines for Computer Software-Related Inventions in October 1998 and made amendments in 2008 and 2014.


However, in recent years, the booming development of technologies such as artificial intelligence (AI), Internet of Things (IoT), big data, blockchain, and autonomous driving has led to new types of applications and inventions in various fields, and the patents of these inventions are usually examined from the perspective of computer software or computer implementation. To properly adapt to ongoing changes in technologies, while continuing to meet the practical necessities of examination, there is a need to further amend existing examination guidelines. Therefore, the Taiwan Intellectual Property Office (TIPO) began amending the Examination Guidelines for Computer Software-Related Inventions in 2020 and held a public hearing on February 24, 2021 to collect opinions from various sectors.


The main points of the Draft Amendment to the Examination Guidelines for Computer Software-Related Inventions are as follows:


1.        Guidelines for determining the definition of an invention (i.e., eligibility) for computer software-related inventions were clearly specified.

Eligibility determination in the current Examination Guidelines for Computer Software-Related Inventions is mainly based on the European patent criteria of having a "further technical effect" and the American patent criteria of "simply utilizing the computer." However, in practice, the determination process is unclear and inconsistent, and the determination criteria of a "further technical effect" even implies the concept of a partial inventive step. In response to the diversification of computer software-related inventions, the Intellectual Property Office adopted an open approach to encourage innovation. After examining existing invention eligibility standards of many other countries, Japan, which has a legal system relatively similar to Taiwan's, was chosen as a main reference for the amendment. The determination criteria of possessing a "further technical effect" and "simply utilizing computers" were removed from the original guidelines, and the eligibility of the claimed invention as the object of determination and related determination procedures and flowcharts were clearly specified and illustrated with actual cases. In addition to stipulating what obviously meets or does not meet the definition of an invention, new examination rules for non-obvious determinations were also added, making determination criteria clearer.


2.        Criteria for determining the inventive step of computer software-related inventions and the general provisions of inventive steps in the examination guidelines were made consistent.

Corresponding to general provisions of inventive steps in the current examination guidelines, new sections regarding "a person having ordinary skill in the art," "factors for denying an inventive step," and "factors for affirming an inventive step" were added. Furthermore, "technical field adaptations," "the systemization of methods of operation performed by humans," "the softwarization of functions performed by prior hardware technology," and other related provisions in the current Examination Guidelines for Computer Software-Related Inventions were included as "simple change" factors for denying an inventive step. For example, many computer software-related inventions use the same or similar software, processes, or AI models of previous inventions to process different types of data (e.g., applying software that processes financial data to process medical data), and this type of invention may be viewed by the examiner as a simple technical field adaptation and may not considered an inventive step. Therefore, when an applicant applies for this type of technical field adaptation patent, it is recommended that they include in the specification the technical problems encountered in the integration of software and hardware when adapting to the technical field, the differences in hardware or software resulting from the adaptation and prior art, and the unanticipated technical effects resulting from such differences or adaptation, to increase the chances of an invention being deemed an inventive step.


3.        New examination items and cases related to artificial intelligence were added.

As the example cases in the current Examination Guidelines for Computer Software-Related Inventions are no longer applicable to the emerging industry mentioned above, the draft has added many sample cases involving artificial intelligence and related fields (e.g., cases of patent eligibility and ineligibility, inventive steps, and inadequate disclosures) as references for patent examiners and practitioners.



In summary, the draft amendments to the Examination Guidelines for Computer Software-Related Inventions are considerably more extensive than the two previous amendments. To best guide patent practitioners when handling cases involving computer software-related inventions, many patent practitioners strongly recommended at the public hearing held on February 24, 2021 that TIPO include more sample cases (especially positive cases) in the Guidelines, so that patent practitioners can have a stronger basis on which protection for their clients' inventions can be based, further promoting development of emerging IT industry in Taiwan.