As more and more innovators in China have developed new business models by making use of computer science and internet technology, patent protection of software-related inventions has become one of the hottest topics in the intellectual property field in this country. For example, the concept of "Internet Plus" has been very popular in the recent two years, which means utilizing internet technology to improve the business models of traditional services, and whether to and how to protect such new business models with patents has caused many discussions in China. On this background, the Guidelines for Patent Examination and related patent examination practice have been updated to meet the increasing demands for protecting software-related inventions, and now there is an unprecedented friendly environment for patent applications involving software and especially business methods.
In this article, we will introduce the latest updates of the patent examination practice for software-related inventions, and will discuss some useful tips in drafting and prosecuting software-related inventions in China.
1. Relaxed requirements for formal subject matters and for ways of drafting claims for software-related inventions - get prepared for future enforcement by drafting varieties of claims
According to the Guidelines for Patent Examination, "a computer program per se" falls within the category of "rules and methods for mental activities" which are excluded form patent protection as provided in Article 25 of the Patent Law (see Part II, Chapter 1, Section 4.2 of the Guidelines for Patent Examination).
For a long time until April 1, 2017, claims having subject matters of computer programs or computer-readable mediums characterized merely by computer programs stored thereon had been rejected as seeking to protect "rules and methods for mental activities". At that time, a claim seeking to protect a software-related invention could be allowed only if it was drafted as a method comprising steps or an apparatus comprising modules for performing steps in strict correspondence with the method claim or a process flow recited in the description.
However, method claims would encounter many difficulties in enforcing the patent right, and "apparatus comprising modules" claims would also lead to restricted enforcement because some court judges thought it was unclear what kind of hardware components the "modules" actually referred to. In addition, if computer programs were distributed in the form of computer-readable mediums, it would be possible that the manufacturer of the computer-readable mediums would not infringe either of the above method and apparatus claims. Due to these concerns, there had been a strong demand in the software industry to relax the exclusion of the formal subject matters and the formal requirements for drafting software-related inventions so that it could be easier for innovators to enforce their patent rights.
As of April 1, 2017, the revised Guidelines for Patent Examination came into force, in which a very subtle revision was made as follows (see Part II, Chapter 9, Section 2 of the revised Guidelines for Patent Examination):
"If a claim merely relates to an algorithm, or mathematical computing rules, or computer programs per se, or computer programs per se recorded in mediums (such as tapes, discs, optical discs, magnetic optical discs, ROM, PROM, VCD, DVD, or other computer-readable mediums), or rules or methods for games, etc., it falls into the scope of the rules and methods for mental activities and does not constitute the subject matter for which patent protection may be sought."
Although the addition of the word "per se" looks like a small revision, the State Intellectual Property Office of China (SIPO) explained that it was intended to distinguish a sequence of machine-readable code which should be protected by copyright from the technical solution based wholly or partially on process flow of computer programs. In this way, the revised Guidelines for Patent Examination have clarified that what cannot be protected is a computer-readable medium with the program code "per se", but a computer-readable medium having instructions for performing a technical method is not anymore excluded from patent protection. In other words, since April 1, 2017, a computer readable medium characterized in the instructions recorded thereon is no more rejected simply because of its title of the subject matter.
It is also worth noting that although the revised Guidelines for Patent Examination also use the word "per se" after the term "computer programs" even when no computer medium is mentioned, what has become allowed in the current patent examination practice is only the computer readable medium, but a computer program alone without a tangible carrier is still excluded from patent protection according to the current patent examination practice.
In addition, the revised Guidelines for Patent Examination also include the following (see Part II, Chapter 9, Section 5.2 of the revised Guidelines for Patent Examination): "If it is drafted as an apparatus claim, the various component parts and the connections among them shall be specified, wherein the component parts may comprise not only hardware but also programs."
SIPO explained that this revision intended to clarify that the way of drafting an apparatus involving software features would not be limited to "apparatus comprising modules" as described above, but the claims may be drafted as an apparatus comprising a memory having computer programs stored thereon and a processor configured to perform several steps when executing the computer programs. This way of drafting will enable the claim to recite actual components such as memories and processors and other hardware which are contained in an apparatus, instead of "modules" with vague meanings.
According to the revised Guidelines for Patent Examination, now there may be the following ways of drafting a claim to seek protection of a software-related invention:
- a method comprising steps of ...;
- an apparatus comprising modules for ...;
- an apparatus comprising a memory having computer programs stored thereon and a processor configured to perform, when executing the computer programs, steps of ...
- a computer readable storage medium having computer programs stored thereon, the computer programs being configured to perform, when executed on a processor, steps of ... .
Since the revised Guidelines for Patent Examination came into force just recently, there has not yet been many court cases to tell which of the above four kinds of claims would be more useful in enforcement, and thus it may be better to keep all these types of claims, especially for inventions of high value.
In addition, in order to avoid the possibility that the court judges would have difficulty in understanding and interpreting how the software actually works, it is advisable to add some general description of hardware and software environment in which the invention could be implemented.
2. More friendliness to inventions involving business methods - patent your novel business models
It is provided in Article 2 of the Patent Law that "invention" means a new "technical solution". According to the Guidelines for Patent Examination, a technical solution is a set of technical means which adopt laws of nature for solving a technical problem (see Part II, Chapter 1, Section 2 of the Guidelines for Patent Examination). According to the patent examination practice, if a claim does not involve technical means, does not address a technical problem, and does not achieve a technical effect (note that the key point is the word "technical"), the claim would be deemed as seeking to protect a patent-ineligible subject matter. On the other hand, Article 25 of the Patent Law provides that no patent right shall be granted for "rules and methods for mental activities" as we mentioned above, and the examples of "rules and methods for mental activities" given in the Guidelines for Patent Examination include "methods and systems for management in respect of organization, manufacture, business implementation and economy etc." (see Part II, Chapter 1, Section 4.2 of the Guidelines for Patent Examination). In a nutshell, Both Article 2 and Article 25 of the Patent Law can function as the legal ground to reject an invention involving business methods.
Many Chinese patent attorneys still have the memory of receiving rejections of patent applications from SIPO only because the claims involve business purpose such as advertising or marketing. At that time, in spite of technical features contained in the claims, the examiners from SIPO sometimes would still assert, without support of any prior art evidence, that the claims were patent ineligible because these technical features were "common knowledge in the art". In addition, even if some technical features did function to solve a certain technical problem occurring in the business method, the examiners sometimes would still assert that the problem to be solved by the invention was the business problem instead of the technical problem. Since two years ago, we have observed a pleasant change in the examination practice. For a claim which comprises both technical features and non-technical features, the examiners have no longer asserted such claims as patent ineligible, but would first do prior art search, and then consider, during inventiveness assessment, whether the problem to be solved by the invention on the basis of the distinguishing features is "technical". If the problem to be solved by the invention on the basis of the distinguishing features is not "technical" but merely business related, the claim would be rejected as lacking inventiveness. In this way, the rejection must be made on the basis of prior art evidence, and the whole solution would be considered, but no ineligibility rejection could be made simply on the basis of an intuitive identification of a business purpose or a careless assertion of "common knowledge". Since this change of examination practice, we have noticed that many ineligibility rejections have been revoked and more inventions involving business methods have been allowed.
This change of examination practice is also embodied more or less in the revised Guidelines for Patent Examination that came into force since April 1, 2017, with the addition of the following paragraph (see Part II, Chapter 1, Section 4.2 of the revised Guidelines for Patent Examination):
"If a claim related to a business model involves not only content of business rules and methods but also a technical feature, it shall not be excluded from the possibility of being granted a patent right according to Article 25 of the patent law."
According to the current examination practice, if a claim has a technical feature, even if it also contains some nontechnical features, the technical solution as a whole should be deemed as patent eligible. In other words, a patent application involving business methods will more possibly encounter an inventiveness rejection than a patent ineligibility rejection.
To give just one example, Chinese Patent Application No. 201310105464.4 filed by Tencent relates to a method for collaborative order. Although this patent application aims to protect a trading process including sending an collaborative order invitation to selected relational users of a subscriber, and combining order information sent by the subscriber and sub-order information returned by the relational users so that a trading platform can process combined order information, no patent ineligibility rejection was raised in the first Office Action issued for this patent application, but instead inventiveness rejection was raised based on prior art reference documents. This patent application was allowed in June 2016, and the claims of the allowed claims are as follows.
"1. A method for collaborative order, comprising: receiving a collaborative order request sent by a subscriber, wherein the collaborative order request carries commodity information; acquiring a relational user of the subscriber from a relational user set of the subscriber in response to the collaborative order request;
sending a collaborative order invitation of the commodity information to the relational user of the subscriber, to invite the relational user of the subscriber to send sub-order information of the commodity information in response to the collaborative order invitation; receiving order information of the commodity information sent by the subscriber and the sub-order information of the commodity information sent by the relational user of the subscriber, and combining the order information of the commodity information sent by the subscriber and the suborder information of the commodity information returned by the relational user, to obtain combined order information; sending the combined order information to a trading platform of the commodity information for processing;
updating a state of the combined order information and sending the combined order information with the state to the subscriber and the relational user of the subscriber who returns the sub-order information of the commodity information."
From the above example, you may have an idea of how friendly the current examination is for inventions involving business methods.
Although the examination for inventions involving business methods have been relaxed, it should be noted that pure business method without any technical element is still patent ineligible. Therefore, in order to obtain allowance of your patent applications involving business methods, it is still advisable to include a detailed description of technical features, technical problem and technical effects in the specification.
Until now, we have seen that the updated patent practice and the latest revised Guidelines for Patent Examination have provided a better environment for software-related inventions than ever, and innovators who create new business models based on computer technology can have more opportunities to protect their business solutions. In addition, as some large Internet companies have emerged and grown even larger in China in the recent years, the domestic innovators in China are even asking more protections from patents, and thus people are expecting to see whether the SIPO might even ferment another revolution in the future to further relax the patent examinations of software-related inventions. For example, everyone is eager to know whether even computer programs may become allowable subject matter in the future, so that enforcement against software provided and distributed via the Internet may become even easier. Let us wait and see whether this will finally come true.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
