Sponsored roundtable: How to patent your computer-implemented inventions in China

Martin Meng: A patentable computer-implemented invention must be a “technical” invention according to Paragraph 1, Article 2 of the Patent Law. This means that it should meet the following criteria:

1.         It seeks to resolve a technical problem,

2.         Includes at least one technical feature, and

3.         Achieves a technical effect.

According to the Guidelines on Patent Examination (Guidelines), lacking any one of the above will make the computer-implemented invention non-patentable subject matter.

The computer-implemented invention is not considered as an independent category when looked at from the patent eligibility perspective although it occupies a chapter in Part II of the Guidelines. Generally, the computer-implemented invention is patentable if it meets the above criteria although the computer program itself and computer-readable storage medium are categorically excluded in the Guidelines.

As described in the Guidelines, the computer-implemented invention may be drafted as an apparatus or a method claim. In addition, for the method claim, SIPO does not require the hardware component to be included in the claim language to distinguish it from an abstract idea. In contrast, SIPO sometimes overlooks the claim language and intends to conclude from substance of the invention.

Howard Hao: The computer-implemented invention includes not only traditional technical solutions, such as for improving performance of the computer, or performing industrial control via a computer, but also new solutions for implementing a business method via a computer or a network. Consequently, as recognized SIPO, formulation of a rule for determination of patent eligibility directly based on the specification and claims of an application is sometimes difficult. SIPO intends to increase prior art searches and inventiveness analyses in examination of eligibility of claimed subject matter. As a result, it increases the chance of allowance of the computer-implemented invention if the technical aspect is emphasized during preparation and prosecution of the application.

Before 2004, SIPO examiners usually relied on non-statutory subject matter, such as the “rules and methods of mental activities” as stipulated in Paragraph 1, Article 25 of the Patent Law, to reject a claim of a computer-implemented invention if the examiner discovered that the invention was not in response to a technical problem in the art. This would sometimes occur whether or not there was a technical feature, such as a computer or a network, in the claim. This approach led to some strange rejections- for example, a claim for a computer device may at times be considered as a “mental activity.”

Meng: After 2004, Paragraph 2, Article 2 of the Patent Law, which was Paragraph 2, Rule 2 of the Implementing Regulations of the Patent Law before 2008, stipulated the definition of the invention: A new technical solution for a product, a process or an improvement thereof, was commonly used in rejection of a computer-implemented invention due to patent eligibility.

SIPO requires that the examiner analyze the actual problem and the effect of the claimed invention based on the status of the prior art if a technical feature is involved and then draw a conclusion based on the analysis: if the actual problem is a technical problem and the effect is a technical effect, the claimed subject matter is patent eligible. Otherwise the claim should be rejected because of failure to claim a technical solution as stipulated in Paragraph 2, Article 2 of the Patent Law.

However, in practice many examiners directly asserted that all the technical features recited in a claim, such as the computer or the network, were common technical means in the art and the actual problem resolved by the computer-implemented invention was not a technical problem since it involved no technical features, and the effect achieved by the invention was not technical. Consequently, the examiner would conclude that the invention was not patent eligible.

Because the technical features were deliberately separated from the claims and then arbitrarily deemed as common means in the art without consideration of their functions in the whole technical solution, even computer-implemented invention applied in industrial control, which is conventionally patent eligible, may be excluded from statutory subject matter according to the approach in the above. Moreover, it was no help to distinguish patent eligible and ineligible subject matter among the computer-implemented inventions.

Hao: In 2008, SIPO specified the examination on the computer-implemented invention and required the examiner to reject non-statutory subject matter based on the background descriptions, or common knowledge or results of prior art searches.

In addition, SIPO has devised an inventiveness examination approach to computer-implemented inventions. The examiner may directly examine for the inventiveness of the invention without consideration of eligibility of the subject matter. After the closest prior art reference and the distinguishing technical feature were determined, the examiner should figure out what problem the claimed invention actually resolves, as done for other kinds of inventions. However, if the problem as determined was not a technical problem, for example a business problem, the examiner may directly conclude that it was obvious for person skilled in the art and thus lacks inventiveness over the closest prior art reference.

Although SIPO intended to include more analysis of the claimed solution through prior art search and inventiveness determination, most rejections from patent office on eligibility of the computer-implemented inventions are for the same reasons as before: the technical features were considered common means in the art based on the background description or common knowledge in the art.

Hao: In order to meet the requirement of patent eligibility, a computer-implemented invention patent application should have a technical “story,” including what the technical problem the invention is directed to, what the technical features the invention contains, and what the technical effect the invention achieves. Even some business method inventions also have their technical aspects. For example, a new transaction platform might have improved security and thus might be claimed as a safer platform for transactions. A method of evaluating credit of a subscriber might be claimed as a method for classifying subscribers according to common properties.

When preparing the specification, especially the background and the summary of the invention, the technical aspect of the invention should be emphasized to direct the examiner to consider the technical improvement of the invention. It is also quite critical to include the subject matter from the technical aspect into the original specification and claims so that the claims may be amended in a later stage to qualify the “technical” solution.

During the prosecution stage, the situation might become more complicated because SIPO has many limitations on claim amendment. Adding completely new and different subject matter from the technical aspect might be deemed as exceeding the original disclosure and refused by the examiner. Therefore, the amendments have to be made based on the original claims.

Meng: In response to a rejection of a computer-implemented invention because it is found to be non-statutory subject matter, the applicant may take the following approaches:

1.         Cancelling the non-technical application features from the claims,

2.         Reserving or adding technical features included in the invention and directing the examiner’s attention to the technical problem underlying the non-technical application, and

3.         Emphasizing the technical effect achieved and its improvement to the non-technical application so as to convince the examiner that the change of the non-technical application was made due to the technical improvement achieved by the invention.

Moreover, since SIPO encourages the examiner to conduct prior art searches and inventiveness analysis in examination of the computer-implemented invention, the applicant should try to force the examiner to follow SIPO’s requirement so as to increase possibility of passing the examination.

Hao: Separating all the features of a claim into technical features and non-technical features and then conducting a prior art search and inventiveness analysis only on those technical features are not as simple as it looks like because this approach often seems unreasonable since in most cases the technical features and non-technical features are indivisible.

Moreover, as we discussed earlier, this approach is not a feasible method to distinguish between patent eligible and ineligible subject matter and thus there are always good arguments from the applicant when facing this kind of rejection. In addition, the distinguishing feature from the closest prior art reference may still contain undisclosed technical features which help to formulate a technical problem the invention actually seeks to resolve. With the closest prior art reference as a comparison, the improvement and advantages of the computer-implemented invention can be shown in a clear and persuasive manner, which also help to succeed in overcoming the subject matter type of inventiveness rejection.

In view of the above, the computer-implemented invention may be protected under the Patent Law if its technical aspect is recognised by the SIPO examiner. As SIPO would like to increase prior art searches and invention analysis when examining the patent eligibility of the computer-implemented invention, the possibility of patenting this kind of invention might increase although it will take time to observe the examination results because SIPO does not actually wish to loosen the eligibility requirement for computer-implemented inventions.

 

 

(martinmeng@changtsi.com)

Martin Meng manages the patent department at Chang Tsi & Partners. Mr Meng has more than a decade of experience as a patent and IP attorney assisting foreign and domestic companies in IP prosecution and enforcement. He specialises in patent infringement litigation, invalidation of patent rights and drafting and prosecution of patent applications. Mr Meng is also skilled in assessing patentability and enforceability, as well as handling invention, utility model and industrial design patents across many sectors.

Martin Meng have passed both Patent Bar Examinations in China and in the U.S., as well as the China Bar.

(howardhao@changtsi.com)

Howard Hao is a patent attorney and the deputy manager of the patent department. Mr Hao provides consultation services on a wide range of patent issues, including inventions, utility models and industrial designs. Mr Hao specialises in patent prosecution in China. He has filed over 600 patent applications and responded to over 500 office actions relating to medical equipment, engines, automotive technology, machine tools, metal materials and mechanical and electrical control systems. He also provides broad IP legal services on a strategic scale.

Howard Hao have passed both Patent Bar Examinations in China and in the U.S.