1 Computer Program Related Inventions in China Stephen Yang Peksung Intellectual Property October 22, 2015, AIPLA.

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Computer Program Related Inventions in China

Computer Program Related Inventions in China

Stephen YangPeksung 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– 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)Relevant Provisions – Article 25.1(2)

• Examples of “rules and methods for mental activities”

– 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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• Examples of “rules and methods for mental activities”

– 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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• A claim that has • 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: • 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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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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• 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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• 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

• 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 MethodsBusiness Methods

• Classified into five categories: – 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 MethodsBusiness 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 - DescriptionPractice 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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• 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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• 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 - ClaimsPractice 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 ActionPractice 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 PointPractice 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 ClaimsFormat of Claims

• Claim 1: A communication method comprises step A, step B and step C.

• 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.

• 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.

• Claim 4: A communication system comprises a memory and a processor configured to perform step A, step B, and step C.

• Claim 5: A communication system configured to perform step A, step B and step C • 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 FormatsPermitted 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 ClarityFormats 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 SupportFormats 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

• 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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Practice Tips – Claim Formats

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Stephen Yang

[email protected] Intellectual Property Ltd.

mailto:[email protected]

1 Computer Program Related Inventions in China Stephen Yang Peksung Intellectual Property October 22, 2015, AIPLA.

Documents

mental activities methods

methods of various games

patent applications

methods of editing calendars

chess manuals methods

mental activities rules

examples of rules

relevant provisions