China: Patenting Software In China: The Challenges Of Drafting

How should you draft a Chinese patent application for a computer program invention? Stephen Yang of Peksung Intellectual Property offers some prosecution solutions

The prosecution of computer program patent applications in China has been difficult. Chinese examiners are very meticulous in the format of claim drafting. This article will explain the current Chinese practice and give advice on the drafting of claims and descriptions in such applications.

According to the Guidelines for Patent Examination, a claim of a computer program patent application can be drafted as a method claim or apparatus claim. In the apparatus claim, each component should completely correspond to each step in the computer program flow, or each step in the method claim reflecting the computer program flow. Each component in the apparatus claim will be regarded as function modules and the apparatus claim, which is defined by such a group of function modules, is regarded as the function module architecture to realise the solution, mainly through the computer program described in the description rather than physical devices to realise the solution through hardware. An example is given below:

Claim 1: an online printing method comprises step A, step B and step C.
Claim 2: an online printing system comprises first means to perform step A, second means to perform step B and third means to perform step C.

Claim 2 meets the drafting requirements as it is drafted in the format of function module architecture completely corresponding to the steps of the method and is construed as function module architecture realising a solution through the computer program. If the description includes sufficient description of the computer program flow, such a claim is regarded as being supported by the description. If an apparatus claim is drafted, the applicant should make sure each component therein completely corresponds to each step in the computer program or each step in the method claim. The subject of the apparatus claim should strictly correspond to that of the method claim, too.

However, a decision made by the Shanghai High People's Court on 24 February 2014 in Nokia v Huaqin (HuGaoMin San (Zhi) ZhongZi No.96 (2013)) brought about heated discussion among intellectual property professionals in China over this type of claim format.

In this decision, the Shanghai High People's Court maintained the first instance court's decision and rejected Nokia's allegation that Huaqin infringed claim 7 of its Chinese patent (ZL200480001590.4), which is a product claim drafted in the format of function module architecture. The court decided that claim 7, written in the format of "a terminal device, configured to", uses functional limitation. As a result, its scope should be construed according to Article 4 of the Interpretation of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights, issued by the Supreme People's Court. This prescribes that for a technical feature in a claim represented by function or effect, the courts will determine its content by referencing the specific embodiment and its equivalent embodiment(s) of the function or effect as described in the description and the appended drawings.

However, as the description contains no content about the hardware device, the court decided that since there is no specific embodiment of a hardware device in the description, it is impossible to determine the scope of claim 7 with functional limitations and to determine whether the allegedly infringing product falls within the scope of claim 7. One of Nokia's arguments was that in a related invalidation case, the Patent Re-examination Board, Beijing No.1 Intermediate People's Court and Beijing High People's Court all decided that claim 7 is clear and maintained its validity. But the Shanghai High People's Court ruled that claim 7 is clear only in the sense of meeting the requirement for granting patent rights and the practice is not applicable to judging infringement.

This decision has been regarded as controversial. On the one hand, the State Intellectual Property Office (SIPO) regards claims drafted in function module architecture as protecting methods, in essence. On the other hand, the Shanghai High People's Court regarded such claims as strictly product claims with functional limitations. Although China does not follow case law, applicants are advised to keep the Nokia v Huaqin decision in mind when drafting their claims and descriptions.

First of all, applicants should make sure that the descriptions in their computer program patent applications meet the sufficiency requirement. Although not compulsory, it is preferred to include a principal flow chart of the computer program in the drawings of the description. An explanation of every step of the computer program should be made in the description in natural language, based on the flow chart. Actual source code is not necessary but may be helpful with annotations.

In addition, in light of the Nokia v Huaqin case, it is preferred to include content relating to hardware in relation to the computer program rather than only describe the program itself. Such a description may include the implementing environment of the computer program, hardware components, network structure and relations of components, etc.

In practice, many claims comprise both hardware features and method features corresponding to steps of the computer program. Claims may take one of the following formats:

Claim 3: an online printing 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: an online printing system comprises a memory and a processor configured to perform step A, step B, and step C.
Claim 5: an online printing system configured to perform step A, step B and step C.
Claim 6: an online printing system comprises a memory, first means to perform step A, second means to perform step B and third means to perform step C.

Claim 3 will be objected to for a lack of clarity. The examiner will comment that the instructions are neither structure nor method features and so the structure of the system is unclear.

Claim 4 will be objected to for lack of claim support. The examiner will comment that 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 a computer program to perform the method and so 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 will be objected to for lack of claim support. The examiner's reasoning will be exactly the same as that for claim 4.

Claim 6 will be objected to for lack of clarity. The examiner will comment that the claim is not drafted completely corresponding to the steps of the method and comprises a combination of a physical hardware device and virtual functional module architecture, which actually protects the method realised through the computer program but not the physical device, and so it is not clear whether this claim protects a method or a product. Therefore, claim 6 is unclear.

As can be seen from above, for inventions that only involve computer programs, applicants should avoid using terms such as instructions, avoid using steps of a method to define a system or a hardware feature, and avoid using a combination of hardware features and function modules. Applicants may amend claims in any one of the formats of claims 3 to 6 to the function module architecture format of claim 2. However, there must be 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.

For inventions that involve both hardware and a computer program—their interaction or improvements to both the hardware and the computer program—their claims have to be drafted to include both hardware features and method features defining at least some of the hardware features. However, it may be difficult to persuade Chinese examiners to accept such claims. They would either request applicants to draft product claims in function module architecture or comment that the claims are not supported by the description because they are not drafted in such a format.

However, applicants can still try the following arguments. As prescribed in the Guidelines for Patent Examination, if technical features in a product claim cannot be clearly expressed in terms of either structure features or parameter features, it is permissible to express them with the aid of process features. In addition, applicants may argue that the invention relates to both hardware and computer programs, and so claims are not suitable to be drafted in the format of function module architecture. For this type of claim, it is not appropriate to determine that a claim is not supported by the description simply because it is not drafted in the format of function module architecture and judgement should be made on the basis of the disclosed technical solution, in essence.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions