New examination standards for computer software-related inventions

In order to improve the protection of IP rights related to computer software, in October 1998 the Taiwan Intellectual Property Office (TIPO) issued the Patent Examination Standards for Computer Software. However, with the rapid development of computer software technologies, TIPO began to consider amendments to the standards. Following several public hearings and discussions, the amended standards were finalised and took effect on 20th May 2008.

The amendments deal with the issue of whether computer software alone is a patentable subject matter under the Patent Law and expand the scope of protection for computer software-related inventions, as well as further defining the claim language for "means plus function".

Identifying the eligible subject matter of computer software-related inventions
According to the Patent Law, an "invention" refers to any creation of technical concepts by utilising the rules of nature. Similar to mathematics, in the past computer software alone has not been patentable because it was deemed to be a series of logic algorithms. To deal with this technical essence, the standards indicate that the claims drafted for computer software-related inventions should sufficiently disclose how to perform the algorithms with the technical means to achieve specific functions.

In addition, the standards clearly illustrate several ineligible subjects that are not patentable as computer software-related inventions. For example, a patent application that simply indicates the disclosure of information or an invention being processed by a computer is not a patentable computer software-related invention. Moreover, because program languages are merely artificial arrangements that are not a utilisation according to the rules of nature, these do not constitute eligible subject matter under the Patent Law.

In general, claims related to computer software should have technical features which show how the software program is conducted, rather than simply indicating that the process is performed by a general purpose computer or microprocessor.

Expanding protection of computer software-related inventions
As stated above, computer software used to be considered non-patentable as a series of logic algorithms. However, according to the Patent Law, the subject matter of a claim is an article or a method. Thus, in the past a claim for computer software was usually drafted in the form of a method claim or an article claim (ie, a computer-readable medium and system) in order to comply with the Patent Law. However, the major benefit of a computer software-related invention is the program, rather than the device in which it is stored.

Due to the development of online technology, individuals can download computer software directly into personal computers via the Internet. It is unnecessary to sell computer software through storage media (eg, CDs, DVDs) if consumers can obtain it from retailers directly via the Internet. In fact, in the past a patentee that owned a computer software patent was usually unsuccessful when trying to enforce its patents against the merchants of software products because those merchants were not the users of the patented software. Instead, individual users, who use the technology described by the patent claims, are not the desired licensing targets for the patentee. Thus, merely allowing computer software-related inventions to be claimed as computer-readable media was not an effective way to protect the patentee.

In order to solve this problem, the new standards allow a new type of article claim for "computer program products" when drafting claims for computer software-related products. Thus, a patent applicant can now claim a computer software product as a subject when applying for a patent.

Moreover, in order to leave room for the future development of proper and useful claim language for computer software patents, the new standards also state that the data structure or other similar terms can be the subject matter of a computer software patent. Thus, according to the standards, an article claim for a computer software-related invention can relate to a device, system, computer-readable record storage medium, computer software product, data structure product or other similar article.

Appending new rules for claim
"Means plus function" claim language is often applied in claims for computer software, as most of the technical features come from the function outcome based on the algorithm, rather than from the tangible device in which the software is stored. However, there are no clear rules as to how to determine what claim language belongs to the category of ‘means plus function’ or the scope of the claims drafted by "means plus function".

Although the "means plus function" is reasonably straightforward to identify in English and other European languages, it is harder to identify in Chinese because of the difference in grammatical rules. Therefore, the new standards particularly provide for the determination of "means plus function" claim language for computer software patents. If a claim uses "means for" or "step for" to define the technical features of a computer software-related invention, it will be recognised as a "means plus function" type and the specification will be considered for the explanation of such claim.