Newsletter
Brief Introduction to the Metaverse and the Patent Filing Strategies of Related Business Method
2021 was labeled the year of the metaverse. This year, it has developed from a concept into a new technology trend and become one of the most highly discussed topics in the scientific and technological circle and investment circle. A variety of leading companies around the world have been attracted to invest in the market of the metaverse.
Since the metaverse is an emerging technological concept, various definitions of the metaverse have been proposed in industry and academia. Nevertheless, there is not yet an established definition of the metaverse. One of the definitions that is worth considering is proposed by the New Media Research Center of Tsing Hua University in its “Research Report on the Development of the Metaverse in 2020-2021” that "the metaverse is a novel type of Internet application and social formation in which virtuality and reality are connected together by an integration of various new technologies. It provides an immersive experience with the help of extended reality (XR) technology, generates a mirror image of the real world by means of Digital Twin technology, and builds an economic system using blockchain technology. These technologies closely connect the virtual world with the real world in economic, social and identification systems, and allow each user to conduct content production and world editing"[1]. As reflected by the above definition, the metaverse is a new concept that integrates a variety of technologies. In other words, the metaverse involves not a single technology but a collection of technologies.
I. Categories of metaverse technologies[2]:
1. Blockchain: decentralized digital currency is its core spirit, and such currency may grow into a key medium for goods and service exchanges in the metaverse.
2. Extended reality (XR)[3]: it refers to environments combining the physical world with a virtual world, and human-computer interaction devices, including augmented reality (AR), mixed reality (MR), virtual reality (VR), and the like. Cloud computing is also embraced as part of XR. The XR technology has a considerable impact on a user’s immersive experience.
3. Artificial intelligence (AI)[4]: it plays a key role in the expandability and automation of the metaverse, and facilitates digital asset-building.
4. 3D modeling: it creates virtual 3D environments and 3D Avatars.
5. Other technologies such as network capacity (5G, 6G, Wi-Fi 6, etc.) or computing equipment (CPU, GPU, etc.).
II. Application of metaverse-related patents:
The following graph[5] from Clarivate Analytics shows the top 10 owners of metaverse-related patent applications. As can be seen in the graph, Sony and Microsoft, both key players in the video game market, took the lead, followed by Samsung, Google and Meta. It is worth noting though that Meta has surpassed other companies in terms of the number of metaverse-related invention patent applications published in the most recent 5 years, demonstrating its focus on the development of metaverse-related technologies.
III. Taiwan laws and regulations governing the patenting of metaverse-related inventions:
As explained above, the metaverse relates to a digitalized virtual world. Various new business methods or models are bound to emerge during the construction of the metaverse and in specific application scenarios of the metaverse. Due to the digitalized nature of the metaverse, business methods related thereto are generally realized by a combination of information and network technologies, computer software and hardware, and the like. Thus, these business methods as a whole are technology-based. They, for example, may solve a technical problem using technical means and bring about certain technical effects. Accordingly, there is a possibility that these business methods may be eligible for protection by patents.
Regarding patenting of metaverse-related inventions relying on business methods, the Guidelines for Patent Examination (hereinafter “the Guidelines”) issued by the Taiwan Intellectual Property Office set out in Part II, Chapter 12 some special regulations governing “computer software-related inventions.” Examination of software-related inventions can generally be categorized into the following three types:
1. Examination under Article 21 of the Patent Act
Article 21 of the Patent Act stipulates that “Invention means the creation of technical ideas, utilizing the laws of nature.” Accordingly, creations involving neither utilization of the laws of nature nor technical ideas fail to meet the above definition of inventions. Part II, Chapter 12 of the Guidelines provides the following flowchart for determination of patentability:
According to the above flowchart, a software-related invention may be deemed as obviously failing to meet the definition of invention as long as it is an artificial arrangement (e.g., game rules), mathematical formula, business method, simple disclosure of information, or the like, whereas a software-related invention would be deemed as obviously meeting the definition of invention if it specifically implements the controlling or processing of equipment or the like. Where neither of the aforesaid situations is applicable (i.e., neither obviously meeting nor obviously failing to meet the definition of invention), a determination should be made as to whether information processing with computer software is realized using hardware resources. That is, a determination should be made as to whether the claimed software-related invention proposes, according to the purposes of information processing, a specific information processing device or method by cooperative operation of computer software and hardware resources.
As such, a metaverse-related invention tends to be excluded from the definition of invention if it involves only a simple business method. It is thus advisable to elaborate in detail the claimed business method, cooperative operation of the software and hardware resources, and pertinent technical means when preparing the specification, to ensure the definition of invention is satisfied.
2. Examination under Articles 26-1 and 26-2 of the Patent Act:
Articles 26-1 and 26-1 of the Patent Act set for the following provisions:
"The description shall fully disclose the invention in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art.
The claims shall define the claimed invention, and more than one claim may be included therein. Each claim shall be disclosed in a clear and concise manner and be supported by the specification."
Inventions claimed in metaverse-related patent application are often defined with functional limitations. To ensure sufficient disclosure in the specification so that a person ordinarily skilled in the art is enabled to comprehend and carry out the claimed invention, the specification should fully describe the technical features associated with the realization of the claimed functions, for example, algorithms (represented by flowcharts without the full disclosure of codes), and interrelationships between various software modules and hardware components (such as functional block diagrams). Taking an information processing system implementing a business method as an example, the specification should include descriptions to clarify how the business method is realized by computer software or hardware.
The protection scope of a patent application is defined by its claims. Metaverse-related software inventions may cover such subject matters as devices, systems, computer programs (products), computer-readable media (like hard disks, floppy disks, etc.), and relevant methods. It is suggested that the technical features recited in the claims should define the interconnections between various software modules and hardware components as well as corresponding functions in a manner supported by the specification.
3. Examination under Articles 22-1 and 22-2 of the Patent Act:
Articles 22-1 and 22-2 of the Patent Act set forth the novelty and inventive step requirements for patents, respectively.
The novelty requirement for software-related inventions is similar to the general novelty provisions stipulated in the Guidelines. That is, a software-related invention is deemed as satisfying the novelty requirement unless it was disclosed in a printed publication, publicly exploited or publicly known prior to the filing of the patent application.
The inventive step requirement is also in line with the general inventive step provisions stipulated in the Guidelines, with additional requirements concerning “a person ordinarily skilled in the art,” “factors negating inventive step,” and “factors affirming inventive step.” Meanwhile, “transfer of technical field,” “systematization of operational procedures carried out by humans” and “softwarization of the functions performed previously by hardware technologies,” as stated in the Guidelines in connection with software-related inventions, are classified as “simple modifications” that would not constitute an inventive step. For instance, a large number of software-related inventions propose the utilization of software, operational procedures or AI models similar or identical to those disclosed in prior art references for processing different types of information (e.g., using software designed to process financial data for medical data processing). Such inventions may be deemed by the examiner as a simple transfer of technical field and thus lack an inventive step.
For metaverse inventions relying on the utilization of software-related technologies to implement business methods, it should be noted that references introducing applications of the same software technologies to different business methods may be selected as prior art when determining the inventive step of the claimed inventions, the patent application may be deemed as a simple modification of the business method disclosed in the prior art reference, and thus lack an inventive step. It should also be noted that “commercial effects” generated by the claimed business method are, in principle, not a beneficial technical effect. However, should the realization of the business method in the claimed invention involve technical considerations or overcome technical difficulties to the extent that it makes a patentable contribution to the technical effects, the aforesaid commercial effects would be taken into consideration during patent examination.
Therefore, when an applicant is to patent such transfer of technical field, it is advisable for the specification to elaborate in detail the technical problems encountered when the software and hardware are combined in the transfer of technical field, resultant distinctions from the disclosures of prior art references in terms of the software and hardware, and the expected effects brought about by such distinctions or transfer, so that the claimed invention would have an increased chance of being deemed as having an inventive step.
IV. China laws and regulations governing the patenting of metaverse-related inventions:
For invention patent applications involving business methods, some special requirements are set forth in the newly added Section 6 of Chapter 9, Part II of the Patent Examination Guidelines of China (hereinafter the “China Guidelines”) issued by the CNIPA and effective as of February 1, 2020. According to the China Guidelines, the examination of such patent applications should be guided by the following principle: During the examination, technical features, algorithmic features or features concerning business logic and methods should not be considered separately. Instead, all of the features recited in the claims should be considered as a whole, and analysis should be conducted with respect to the technical means involved, technical problem(s) to be solved, and resultant technical effect(s). Specifically, the requirements set forth in the China Guidelines mainly cover patent examination at the following three levels:
1. Examination under Article 25.1.2 of the China Patent Law
Article 25.1.2 of the China Patent Law stipulates that rules and methods of intellectual activities are ineligible for patent protection.
Patent examination at this level is to determine whether technical features, in addition to algorithmic features or features concerning business logic and methods, are included in a claim. The presence of technical features indicates that the claim as a whole is not directed to a rule and method of intellectual activities, and thus should not be deemed ineligible for patent protection under Article 25.1.2 of the Patent Law.
2. Examination under Article 2.2 of the China Patent Law
Article 2.2 of the China Patent Law stipulates that an invention refers to a novel technical solution proposed with respect to a product, method or improvement thereof.
Patent Examination at this level is carried out after the eligibility requirement at the first level is satisfied. At this stage, all of the features recited in the claim should be taken into consideration as a whole, in order to determine whether the resolution defined thereby is a technical solution. If technical means involving utilization of the laws of nature are employed to solve the technical problem(s) (e.g., to process data having an exact technical implication in the technical field; each procedure involving algorithms or business logic shows a close correlation with the technical problem(s) to be solved), and technical effects in conformity with the laws of nature are achieved, the solution defined in the claim is deemed as a technical solution.
3. Examination under Articles 22.2 and 22.3 of the China Patent Law
Articles 22.2 and 22.3 of the China Patent Law set forth the novelty and inventiveness requirements for an invention. That is, patent examination at this level is carried out to review the novelty and inventiveness of the technical solution defined in the claim(s) after the patent eligibility of the subject matter is verified.
Patent examination at this level also needs to take into consideration all of the features recited in the claim. The aforesaid all of the features encompass not only technical features but also algorithmic features or features concerning business logic and methods. In particular, when the inventiveness of the subject matter is examined, the algorithmic features or features concerning business logic and methods that have a functionally supportive and interactive relationship with the technical features should be taken into consideration as a whole together with the aforesaid technical features. “Functionally supportive and interactive relationship” means that the algorithmic features or the features concerning business logic or methods are so closely connected to the technical features that they together constitute a technical means to solve a certain technical problem, and can achieve a corresponding technical effect(s). For instance, if the implementation of the claim features concerning business logic and methods requires adjustments or improvements in the technical means, it can be deemed that there exists a functionally supportive and interactive relationship between the features concerning business logic and methods and the technical features. Accordingly, when inventiveness examination is conducted, the contribution of the features concerning business logic and methods to the technical solution should be taken into consideration.
Therefore, if an applicant wishes to seek patent protection for metaverse-related business methods, the above-identified requirements set forth in the China Guidelines should be kept in mind when drafting the specification and claims. Other requirements set forth in the China Patent Law, such as sufficient disclosure and support for claims in the specification, should also be satisfied. For instance, for an invention comprising both technical features and features concerning business logic and methods, the specification should provide a detailed description and explanation of the entire technical problem-solving process, so that a person ordinarily skilled in the art is able to practice the technical solution in light of the disclosure of the specification. In addition, the specification should clarify how the technical features work together with the features concerning business logic and methods that have a functionally supportive and interactive relationship with the aforesaid technical features, and bring about beneficial effects. Apart from the specification, claims should delimit the scope of patent protection in a clear and concise manner, with the specification serving as basis, and should also recite technical features and algorithmic features or features concerning business logic and methods having a functionally supportive and interactive relationship with the aforesaid technical features.
[1] New Media Research Center of Tsing Hua University, “Research Report on the Development of the Metaverse in 2020-2021” (16 September 2021)
[2] TTConsultants, Metaverse-Report, https://ttconsultants.com/Reports/metaverse-report/
[3] Yogesh Nayak, Metaverse-Live In the Future, https://ttconsultants.com/metaverse-live-in-the-future/ (17 April 2022)
[4] Carlos Melendez, The Metaverse: Driven By AI, Along With The Old Fashioned Kind Of Intelligence, https://www.forbes.com/sites/forbestechcouncil/2022/04/18/the-metaverse-driven-by-ai-along-with-the-old-fashioned-kind-of-intelligence/?sh=3c6c01511b36 (18 April 2022)
[5] Carlos Melendez, The Metaverse: Driven By AI, Along With The Old Fashioned Kind Of Intelligence, https://www.forbes.com/sites/anthonytrippe/2021/10/12/heres-whos-winning-the-race-to-dominate-metaverse-tech/?sh=494378b70fc1 (12 October 2021)