Overhaul of Taiwan’s patent examination guidelines signals new dawn for software-related inventions

On 1 July 2021 the Taiwan Intellectual Property Office’s (TIPO) revisions of the patent examination guidelines on computer software-related inventions came into effect. These aim to manage changes in the tech landscape and inspire innovation, especially with regard to AI and Big Data. The guidelines are designed to make the examination of software patent applications consistent with that of other patent applications.    

The revisions aim to:

• specify the types of computer software-related inventions that comply with the invention definition prescribed in Article 21 of the Patent Act;
• outline the factors that determine the inventive step; and
• prescribe that AI inventions are subject to statutory exclusion under Article 24 of the Patent Act.

According to Article 21 of the Patent Act, an ‘invention’ is defined as the creation of a technical idea, which uses the laws of nature. The actions of computer software-related inventions that comply with this definition include:

• controlling a machine or a process that accompanies the control of the machine; and
• computing or processing data/information, which demonstrates the technical properties of an object.

Examples of the first situation include controlling a machine to perform specific acts or carrying out the integrated control of a system that comprises several linked machines. Examples of the second include a program in a computer to prevent car accidents, which processes data on vehicle and acceleration speed and the speeds of nearby vehicles to carry out its function.

However, a computer software-related invention is regarded as failing to utilise the law of nature and does not comply with the meaning of ‘invention’ if it presents:

• an artificial arrangement (eg, program language);
• an artificial rule or method (eg, for playing or exercise, or an economic rule, among other things);
• a mathematical formula or method;
• human mental activity (eg, drafting legal documents); and
• practising a business method, which uses the abovementioned points.

In many cases, a computer software-related invention is simply information disclosure by way of a user interface and is designed to appeal to users and make operations easier. This will not be regarded as a technical idea and therefore fails to comply with the definition of an invention.

In some cases, if a computer software-related invention builds a particular device or method to process information, then the device executing a program for this information processing, the method for the information processing and the computer-readable media that stores the program all comply with the definition of an invention.

A computer software-related invention utilises a program, artificial neural network or AI to execute a method for processing information related to medical treatment, which pertains to diagnostic, therapeutic and surgical methods for the treatment of humans or animals, then the method invention is not regarded as acceptable subject matter and will not be approved for an invention patent.

When it comes to the official examination, if the examiner believes that the claimed invention does not comply with the parameters of an invention, they may issue an office action, which provides the reasons for the objection and proposes amendments. The factors determining inventive step are inserted in the patent examination guidelines on computer software-related inventions.

It is believed that the newly revised patent examination guidelines will make the examination standard for patent applications clearer and more consistent.