Computer Program Related Inventions
in China
Stephen Yang
Peksung Intellectual Property
October 22, 2015, AIPLA
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Contents
• Ineligibility
– Relevant provisions
• Article 25.1(2)
• Article 2
– Business methods
– Practice tips
• Format of Claims
– Permitted claim formats
– Lack of clarity
– Lack of support
– Practice tips
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Relevant Provisions
• Article 2: Definition of “invention” - any new technical solution relating to
a product, a process, or an improvement thereof
• Article 25.1: Exclusions
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scientific discoveries
rules and methods for mental activities
methods for the diagnosis or for the treatment of diseases
animal and plant varieties
substances obtained by means of nuclear transformation
designs of two-dimensional printed goods, made of the pattern, the color or
the combination of the two, which serve mainly as indicators
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Relevant Provisions – Article 25.1(2)
• Examples of “rules and methods for mental activities”
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algorithm
software product
computer program
computer game
computer readable medium (if distinguishing feature is the program/instructions)
computer languages or computing rules
methods of examining patent applications
methods or systems for managing organizations, production, commercial
activities, or economy
– traffic rules, schedules, or competition rules
– methods of deduction, inference, or operations
– rules of classifying books, methods of editing dictionaries, methods of searching
information, or methods of classifying patents
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Relevant Provisions – Article 25.1(2)
• Examples of “rules and methods for mental activities”
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rules and methods of editing calendars
operating instruction of an instrument or an apparatus
grammar of various languages or rules of coding Chinese characters
shortcut arithmetic methods and relevant pithy formulae
mathematical theories , rules and methods of conversion
methods of psychological testing
methods of teaching, lecturing, training, and beast training
rules and methods of various games or entertainment
methods of statistics, accounting, or bookkeeping
music books, food recipes, or chess manuals
methods of keeping fit
methods of disease survey and population censuses
methods of presenting information
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Relevant Provisions – Article 25.1(2)
• A claim that has
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features of rules and methods for mental activities; and
technical features
• Such a claim as a whole: not rules and methods for mental activities
• Examiners will not raise objections based on Article 25.1(2)
• Practice tip:
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include “technical features” in a claim
Is this sufficient to make it patentable subject matter?
NO!
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Relevant Provisions – Article 2
• Technical solution: a collection of technical means applying the laws of
nature to solve a technical problem, and technical means are usually
embodied as technical features.
– technical means
– technical problem
– technical effect
• Laws of nature: the laws existing in the objective things in nature, i.e., the
inherent and essential relations between natural phenomena that are
embodied as invariant under certain conditions. - Modern Chinese
Dictionary
– e.g., scientific principles, formulas, or engineering equations
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Relevant Provisions – Article 2
Technical solution: Type 1
• Execute computer programs to perform control of an industrial process, a
measurement, or test process
• complete a series of controls during various stages of industrial process in
accordance with the laws of nature, and
• thus industrial process control effects in conformity with the laws of
nature are obtained
• Example: measuring liquid viscosity using a computer program which
automatically controls data collection, data processing and data display so
as to improve the speed and precision of the measurement
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Relevant Provisions – Article 2
Technical solution: Type 2
• Execute computer programs to process external technical data
• complete a series of technical processes on the technical data in
accordance with the laws of nature, and
• thus technical data process effects in conformity with the laws of nature
are obtained
• Example: eliminating picture noise using statistic principles to eliminate
pixels with grey scale beyond a predetermined level as noise and maintain
the grey scale of pixels within the predetermined level whereby effectively
eliminating picture noise while minimizing blurring of the picture caused
by elimination of picture noise.
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Relevant Provisions – Article 2
Technical solution: Type 3
• Execute computer programs to improve the internal performance of a
computer system
• completes a series of settings or configurations to parts of a computer
system in accordance with the laws of nature, and
• thus internal performance improvement effects of the computer system in
conformity with the laws of nature are obtained
• Example: enlarging the storage volume of a mobile computing device by
using a virtual device file system so as to enable the mobile computing
device to utilize the large volume storage space in the local server.
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Business Methods
Examples: use of computer programs to
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do banking transactions
offer new ways of shopping
show relevant advertisements to a user who searches certain key words
compile a music playlist reflecting the user’s taste
generate specifically formatted documents
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Business Methods
• Classified into five categories:
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pure business methods
existing business methods with no technical improvement
improved business methods with no technical improvement
existing business methods with technical improvement
improved business methods with technical improvement
• The first 3 categories are regarded as not constituting “technical solutions”
• The latter 2 categories can pass Article 2 examination
– what’s next?
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Business Methods
Change of practice since late 2013: examiners
• perform searches
• cite reference documents
• comment on the inventiveness
– problem-solution approach
– same as for “regular” invention patent application
• If distinguishing features are “non-technical” – obvious
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Practice Tips - Description
• Chinese examiners often read contents in the description into the claims.
• Even if a claim only use technical terms such as data, process, and control,
examiners look at the description and comment that the invention in
essence is not a technical solution.
• Minimize the nontechnical aspect of the invention
• Describe invention in a way such that it is not limited to a specific
application (e.g., banking and shopping)
• Describe invention to solve a generic technical problem
• Avoid using nontechnical terms such as transaction, buy, and sell
• Instead, use technical terms such as providing data, processing data, and
collecting data.
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Practice Tips - Description
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Minimize human involvement
Avoid using “the user makes a selection,”
Instead, use “receive an instruction” or “collect data regarding”
Avoid subjective advantageous results, such as better user experience or
better shopping experience,
• Emphasize the technical effects, such as better picture quality, faster data
processing time, and accurate control.
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Practice Tips - Description
• Examiners usually comment that the problems to be solved are not
technical and the advantageous results are not technical even though
technical means are used.
• Show examiners that some aspects of the problems to be solved are
governed by the laws of nature, and the corresponding effects achieved
are governed by the laws of nature.
• Literally include such contents in the description when the application is
drafted so that corresponding arguments can be made to rebut
examiners’ objections.
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Practice Tips - Claims
• A similar strategy should be adopted.
• Avoid expressions such as user taste or user preference
• Use technical terms such as preselected value, input, parameter, receive
an instruction, providing data, processing data, collecting data, etc.
• Claim a generic technical subject, if possible at all
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Practice Tips – Office Action
• Add technical features in the description to the claims, if possible at all
• Remove nontechnical languages and human-related languages from
claims
• Dig up the aspects of the problem and effects that are governed by the
laws of nature from the description, and argue accordingly
• Argue the claimed invention belongs to type 1, 2 or 3 computer-program–
related inventions that are considered as technical solutions
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Practice Tips – Key Point
• The key point is to show examiners there at least some technical
improvements in the solution and argue that the technical improvements
use technical means in compliance with the laws of nature to solve
technical problems and achieve technical effects in compliance with the
laws of nature.
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Format of Claims
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Claim 1: A communication method comprises step A, step B and step C.
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Claim 2: A communication system comprises first means to perform step A, second
means to perform step B and third means to perform step C.
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Claim 3: A communication system comprises a memory and a processor
configured to execute the instructions stored in the memory, wherein said
instructions comprise step A, step B, and step C.
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Claim 4: A communication system comprises a memory and a processor
configured to perform step A, step B, and step C.
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Claim 5: A communication system configured to perform step A, step B and step C
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Claim 6: A communication system comprises a memory, first means to perform
step A, second means to perform step B and third means to perform step C.
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Permitted Claim Formats
• Claim 1: A communication method comprises step A, step B and step C.
– method claim: OK
• Claim 2: A communication system comprises first means to perform step
A, second means to perform step B and third means to perform step C.
– product claim in function module architecture
• Claim 6: A communication system comprises a memory, first means to
perform step A, second means to perform step B and third means to
perform step C.
– mix of physical hardware feature and virtual function module architecture
– change of practice, allowed since end of 2014 or early 2015
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Formats Lack of Clarity
• Claim 3: A communication system comprises a memory and a processor
configured to execute the instructions stored in the memory, wherein said
instructions comprise step A, step B, and step C.
– instructions are neither structure nor method features and hence
– structure of the system is unclear.
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Formats Lack of Support
• Claim 4: A communication system comprises a memory and a processor
configured to perform step A, step B, and step C.
– since it is not drafted in function module architecture, the definition of the processor is
regarded as covering all the possible manners of performing the method
– but the description only discloses using computer program to perform the said method
and hence
– a person skilled in the art cannot appreciate that other manners not disclosed in the
description can also perform the method.
– Therefore claim 4 is not supported by the description.
• Claim 5: A communication system configured to perform step A, step B
and step C.
– lack of support from description
– examiner’s reasoning same as for claim 4
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Practice Tips – Claim Formats
• Avoid using terms such as instructions
• Avoid using steps of a method to define a system or a hardware feature
• Claims 3 to 5 may be amended to claim 2 or 6, only if
– there is a corresponding method claim
– or detailed explanation of each step of the computer program in the
description.
– Otherwise, the amended claim lacks support by the description.
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Stephen Yang
[email protected]
Peksung Intellectual Property Ltd.
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