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Strategies in Response to Patent Eligibility Requirements for Computer Software Patents in the United States, Taiwan, Japan, China and Europe

George Huang

Eligibility is the first challenge applicants would face during patent prosecution, especially for a computer software related application. While there is little difference in the majority of patent regulations among each jurisdiction due to international harmonization, significant differences exist regarding eligibility of computer software related applications. This article describes computer software patent eligibility requirements for TIPO, JPO, USPTO, CNIPA and EPO, analyzes and compares examination in each office using a single case example, and discusses corresponding prosecution strategies. 

Taiwan - TIPO

The new Taiwan Examination Guidelines for Computer Software took effect on July 1, 2021 in response to the development of AI invention patent applications.  According to the 2021 Examination Guidelines for Computer Software, the steps for determining eligibility in Taiwan include[1]:     

1. Deciding whether the invention is obviously compliant/non-compliant with the definition of an invention:

   (i)        Inventions obviously complying with the definition of an invention:

   1. Those concretely performing control of an apparatus and the like, or processing with respect to the control; or
   2. Those concretely performing information processing based on the technical properties of an object.

      (ii)      Inventions obviously failing to comply with the definition of an invention:

      1. Those which do NOT utilize the laws of nature;
      2. Those which do NOT contain technical ideas.
2. Determining whether “the information processing via computer software is realized through the utilization of hardware resources”:

 For inventions that are unable to be determined through step A above, whether the invention, with the cooperation between computer software and hardware resources, establishes a specific information processing apparatus or method based on the purpose of information processing should be determined.

 As mentioned above, after July 2021, determination on patent eligibility of computer software in Taiwan is similar to that of Japan, focusing on whether “the information processing via computer software is realized through the utilization of hardware resources.” In addition, the new Examination Guidelines incorporated many examples[2], some of which are also similar to those in JPO’s examination guidelines. Accordingly, it can be expected that Taiwan’s examination practices will be based on Japan’s examination guidelines to a certain extent or even follow Japan’s examination decisions in the future.

 Furthermore, TIPO released “Cases and Materials on Information Technology Patent Examination” in January 2022[3], providing 20 cases as reference of judgement criteria for applicants. We hereby introduce Case 4.1 in the Cases and Materials on Information Technology Patent Examination to illustrate how TIPO examines eligibility of software inventions:

Claim 2 of Case 4.1 recites:

A personal credit assessment method, comprising:

collecting a raw data for evaluating a user's personal credit;

inputting the raw data of the user into a processing module to form a personal credit score sheet;

outputting and displaying the personal credit score sheet.

 Upon examination, Claim 2 is ineligible:

(1)   Invention in Claim 2 utilizes a processing module, which is not obviously non-compliant with the definition of an invention, and thus it should be further determined whether “the information processing via computer software is realized through the utilization of hardware resources.”

(2)   Though Claim 2 further utilizes a processing module, it lacks recitation about with what kind of technical element the raw data for evaluating a user’s personal credit is accessed, or what technical means the “processing module” specifically executes to process information. As a result, Claim 2 is ineligible.

 United States - USPTO

According to the United States Patent Act and 2016 Manual of Patent Examining Procedure (MPEP), the steps for determining eligibility include[4]:

1: determining whether the claim is to a process, machine, manufacture or composition of matter;

2A: determining whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions);

2B: determining whether the claim recites additional elements that amount to significantly more than the judicial exception enough to impose meaningful limitation on the abstract idea to transform the nature of claim into an eligible patent subject matter.

 Step 1 above is the general regulation about eligibility of an invention (35 U.S.C. §101) while step 2A and step 2B are unique to computer software, usually called the Mayo test[5].

 We can see that the U.S. regulations about eligibility are relatively abstract. “Abstract ideas” and “additional elements that amount to significantly more than the judicial exception” are not clearly defined in explicit terms. Instead, they are explained by precedents.

 One example precedent, CosmoKey v. Duo Security[6] decided on October 4, 2021, United States Court of Appeals for the Federal Circuit, reversed the judgment of the district court, demonstrating that one should examine whether the “specification” of the patent itself describes the enhanced specific effects of the invention to ascertain whether it belongs to additional elements that amount to significantly more than the judicial exception in step 2B.

 Using the aforementioned Case 4.1 as an example, the eligibility of Claim 2 might be examined by a USPTO examiner in the following way:

(1)   Step 1: Claim 2 recites a process. It meets the general regulation.

(2)   Step 2A: elements such as “outputting and displaying the personal credit score sheet” belong to abstract ideas. It should be further determined based on Step 2B.

(3)   Step 2B: elements such as “inputting the raw data of the user into a processing module to form a personal credit score sheet” may be deemed as a generic means, and does not belong to an additional element that amount to significantly more than the judicial exception. However, according to CosmoKey v. Duo Security, it should be further examined whether the specification describes a specific effect, to have a correct determination in Step 2B.

Japan - JPO

According to the regulations on computer software in the 2015 Examination Handbook for Patent and Utility Model in Japan, the steps for determining eligibility in Japan include[7]:

1. Decide whether the claimed software-related invention is a "creation of a technical idea utilizing the laws of nature" based on general criteria for invention patents;
2. If it is difficult to determine in the last step, check whether the claimed software-related invention is a "creation of a technical idea utilizing the laws of nature" based on the standpoint of software.

Among them, the judgment based on the standpoint of software means “whether information processing conducted by the software is concretely realized by using hardware resources.”

Compared to other countries, JPO’s regulations about eligibility are relatively loose. In practice, it is easier to overcome eligibility rejection by amending claims.

 Under these provisions, it is recommended that applicants clearly describe the actual “information processing” conducted by the invention and the software and hardware in claims when applying for computer software patents in Japan. Take the Case 4.1 above as an example, JPO’s examination result might be similar with TIPO’s. Claim 2 is likely to be deemed ineligible for lack of a technical idea (element for TIPO) to process the data.

China - CNIPA

According to the 2019 China Guidelines for Examination of Invention Applications Relating to Computer Programs, the steps for determining eligibility include[8]: 

1. Decide if the invention application contains technical features.
2. If it does, further check whether the invention application adopts technical means to solve technical problems, and achieves technical effects complying with laws of nature.

 Step 2 above is called the “three-element test.” For example, if the invention itself solves a certain technical problem utilizing laws of nature, but not utilizing rules or methods set by human mental activities, and obtains technical effects other than effects produced by algorithm or business method itself, the invention meets the requirements of eligibility.   

Based on these regulations, it is suggested that applicants fully illustrate application scenarios and the technical problems present in the scenarios when drafting the specification. Examples demonstrating how the algorithm is combined with various application scenarios and how to achieve technical effects after combination should also be incorporated in the specification. That is, CNIPA places great emphasis on how the specification is presented and the close connection between the technical problem and technical means.

 Take Claim 2 of the Case 4.1 above as an example. The problem to be solved by the personal credit assessment method is to “objectively and accurately assess a user’s personal credit.” Under this situation, if the specification has neither any description regarding technical insufficiencies the problem has faced, nor relevant embodiments which combine the technical means and application scenarios, the problem to be solved might be deemed as merely a business method. Also, the invention does not adopt any technical means to produce a technical effect. As a result, Claim 2 is ineligible.

Europe - EPO

    Art. 52(2) of the European Patent Convention explicitly lists the below categories of subject matter as being excluded from patent eligibility:

˙       discoveries, scientific theories and mathematical methods

˙       aesthetic creations

˙       schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers

˙       presentations of information

 However, the exclusion above does not apply to computer programs having a technical character[9]. According to G-II, 3.6, Guidelines for Examination in the European Patent Office, whether a “further technical effect” is produced by the computer software invention is the main basis for eligibility determination. The further technical effect is not a better effect as compared to prior arts, but should go beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run. Based on this criterion, the fact that a computer program serving a non-technical purpose requires less computing time than a prior-art program serving the same non-technical purpose does not on its own establish the presence of a further technical effect.

 Accordingly, the EPO does not clearly define a “technical character,” instead providing cases as a reference to applicants, just like USPTO. Based on EPO’s Guidelines for Examination, describing the technical means or steps specifically executed by the software and the produced advantageous effect in detail in the specification may help to meet the eligibility requirement.

 Claim 2 of Case 4.1 is used as an example. If the specification has description about how to collect the raw data, what kind of information the raw data is, how the processing module forms the personal credit score sheet, and what technical effect the technical features has achieved, the eligibility requirement might be met by adding those descriptions into the claim.

Suggested Strategies

In summary, TIPO, JPO, USPTO, CNIPA and EPO have different patent eligibility requirements for computer software.

 USPTO and EPO have more stringent and ambiguous requirements. It is suggested to describe the technical contribution that the technical means achieves thoroughly in the specification. Moreover, for an EPO patent application, it is suggested that applicants select more technical terms in order to prevent the examiner from deciding the means are non-technical simply due to the word itself.

 Applicants should be updated about the latest precedent and adjust their own strategies for application or defense, as U.S. and European provisions are quite abstract and are mainly interpreted by cases.

 TIPO, JPO and CNIPA are more relaxed in this regard. In respect of JPO and TIPO, it is suggested that the hardware, the software and the substantial information processing that may be carried out are clarified in the claims so that the application is less likely to be faced with an eligibility rejection. For applications in Japan, one should also keep in mind the strict written requirements.

 As for CNIPA, applicants are advised to clearly describe the technical problem, means and effects in the specification. Several application scenarios should also be incorporated to strengthen the eligibility of the patent. While it is expected that CNIPA will relax the regulations on eligibility, specification drafting remains a crucial part as computer software patents may still face the challenge of non-obviousness requirements.

Conclusion

While there remain many differences between the TIPO, JPO, USPTO, CNIPA and EPO patent offices, there are some common strategies that may help with eligibility issues in each office.  Describing technical problems and technical solutions in the specification will aid in many of the offices.  Describing the hardware, software, and substantial information processing in the specification and possibly in the claims may also help.

[1] Taiwan Examination Guidelines, Part II, Chapter 12, Section 3.2 Judging steps

[2] Taiwan Examination Guidelines, Part II, Chapter 12, Example 5 (in Chinese)

[3] https://www.tipo.gov.tw/tw/cp-85-900870-d6891-1.html

[4] United States Manual of Patent Examining Procedure (MPEP) 2106, Patent Subject Matter Eligibility

[5] Mayo Collaborative Services v. Prometheus Laboratories, Inc., (CAFC 2012)

[6] CosmoKey Solutions GmbH v. Duo Security LLC (Fed. Cir. 2021)

[7] Annex B, Chapter 1: Computer Software-Related Inventions. (2015). Examination Handbook for Patent and Utility Model in Japan. Japan Patent Office.

[8] Chapter 9, Part 2: Some Provisions on Examination of Invention Applications Relating to Computer Programs. (2019). Guidelines for Patent Examination. China National Intellectual Property Administration.

[9] G-II, 3.6, Guidelines for Examination in the European Patent Office