Amendment to the Patent Examination Guidelines for Computer Software-Related Inventions to take effect as of July 1, 2021

  Taiwan IPO announced that the amendment to the Patent Examination Guidelines for Computer Software-Related Inventions (in Volume II, Chapter 12 of the Patent Examination Guidelines) will come into force as of July 1, 2021.  The applications for computer software-related inventions are on the rise as artificial intelligence and big data have boomed in recent years and that has driven the development of new types of applications and inventions in various fields.  Thus, to adapt to such industrial changes and the demand for innovation protection, it is necessary to amend the current Patent Examination Guidelines for Computer Software-Related Inventions to build and forge a concrete and consistent examination standards.  

The main points of the amendment are summarized as follows.  

1.  Principles for determining the definition of an invention (eligibility) are clearly specified.  

The concept of having “further technical effects” and “simply using the computer” are removed from the current Patent Examination Guidelines for Computer Software-Related Inventions (hereinafter referred to the “Guidelines”).  The amendment stipulates that the invention claimed should be the subject matter for examination on eligibility and also provides the steps and flowcharts for determination.  Also, case examples are provided in each section to make the determination criteria clearer.  (Section 3 of the amendment)

2.  Regulations governing inventive step of computer software-related inventions are made consistent with those provided in the general provisions of the Guidelines.  

    

To correspond to the current general provisions regarding the inventive step of the current Guidelines, the amendment introduces new sections with respect to “a person having ordinary skills in the art”, “ factors for denying an inventive step”, and “factors for affirming an inventive step,” and further includes “alternatively use of known technical field,” “the systemization of operation methods performed by humans”, “the softwarization of functions performed by prior hardware technology”, and other related types into “simple change” factors for denying an inventive step of the current Guidelines.  (Section 4.2 of the amendment)

3.  Regulations governing examination on artificial intelligence (AI) and AI-related case examples are introduced.  

(1)  In response to the situation that artificial intelligence has been widely applied in various fields, it is highlighted in the amendment that examiners should pay attention to the question whether the methods claimed in the applications involving AI-related inventions to be applied in the medical field are the diagnostic and therapeutic methods for human beings and animals that are the unpatentable subject matters in law.  

(2)  Based on the amended contents regarding patent eligibility and inventive step, AI-related descriptions and case examples are added (Section 4.2.2.1.1.1, Section 4.2.2.1.1.2, case examples 2-12, 2-13, and 3-5 in Section 5.2 of the amendment).  Case examples are included as reference and illustration of the circumstances where the enablement requirement is not satisfied due to insufficient disclosure (Case example 1-1 and 1-2 in Section 5.1 of the amendment).  

4.  Other regulations for examination 

(1)  For improving regulations more in line with practical applications and examination, the amendment stipulates that the features of “object/article claims” do not necessarily need to be structurally limited (Section 2.2.1.2 of the amendment).   

(2)  The amendment incorporates the sections with respect to the circumstances where “claims are not clear or definite” and “claims are supported by the description” (Section 2.2.3 and Section 2.2.4 of the amendment).  

(3)  The amendment sets forth the allocation of burden of proof with respect to the claims involving functional limitations and means-plus-function language (paragraph (2) of the Notice on Examination in Section 2.3 of the amendment).  (Released 2021.06.09)