Issues and Tips Relating to Software-Related Inventions to Be Patented in China

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(Author:Yuyue ZHANG; Source: Lung Tin)

Most countries place some limits on the patenting of invention involving software, but there is no legal definition of a software patent. This short article focuses on the patent eligibility of software-related inventions and certain limitations on patenting these inventions in China.

 

. Patent Eligibility

The first issue is whether a software-patent should be allowed, and if so, where the boundary should lie. Like in the U.S. where an abstract idea is non-statutory subject matter, Chinese Patent Law, in Article 25.2, explicitly excludes scientific discoveries and rules/methods for mental activities from patent eligibility.

For example, a claim directed to a pure business method, i.e. a claim not reciting applications of any machine such as computer, intelligent terminal or network, both the American and Chinese patent practices have clear negative attitudes that it is not patentable. For example:

Case 1 [ Bilski vs. Kappos(2010)]

“1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) Initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

(b) Identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) Initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.”

While Case 1 is deemed too abstract, the U.S. Supreme Court’s Bilski case established that a tie to a machine is a clue to patent eligibility.

For example, if the title of subject matter of Case 1 be amended as “[a] method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price with the aid of a computer terminal”, it is named as Case 2 for short.

Despite a legal assumption that software running on a computer, maybe as Case 2, is patentable subject matter in the U.S., a U.S. appeals court recently has ruled that an abstract idea is not patentable simply because it is tied to a computer system. See CLS Bank v. Alice (decided on May 10, 2013). Specifically, one camp of five judges led by Judge Lourie supported invalidating the patents based on the view that the computer limitation as merely “insignificant post-solution activity relative to the abstract idea…”

While in China, Case 2 may not be considered as belonging to circumstances not eligible for patent protection under Article 25.2 of Chinese Patent Law, but needs to be judged whether it belongs to patentable subject matter required by Article 2.2 of Chinese Patent Law for applications for invention patents with a “3-factor-test” (i.e. solving technical problem, using technical means as well as achieving technical effect)  provided by Chapter 9 in the “Guidelines for Patent Examination” (the “GPE”).

If the title of subject matter of Case 2 be further amended as “[a] method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price with the aid of a computer terminal, the computer is programmed to perform the steps of the method”, it is named as Case 3 for short.

In the U.S., in many judges’ view, viewing the software and hardware together (as Case 3) as a new machine was sufficient to overcome the objection that the patent was too abstract. However, in the CLS Bank case, half of the en banc Federal Circuit judges took a sensible view that running a program on a computer does not transform the computer or render software less abstract.

But in China, Case 3, similar to Case 2, although may pass the barrier set under Article 25.2, will be determined as patentable subject matter required by Article 2.2 only after passing the above “3-factor-test”.

It is significant to note that all the three factors in “3-factor-test” must be satisfied. The “3-factor-test” concentrates on testing whether, for a claimed invention, an innovation in term of technology exists, regardless an innovation in term of business mode. Technology innovation means, for instance, application of some software enlarges storage space, improves die forming process of rubber by preventing over-vulcanization and under-vulcanization of rubber, or improves quality of an image【Chapter 9, the “GPE”】.

In other words, it is not correct to say all inventions related to business mode innovations cannot be granted in China. Specifically, if, besides a new business mode, a claimed invention also comprises some technological innovation, it is a patentable subject matter in China.

 

. Limitations on Patentability

Another issue to be addressed here is the prosecution of a software-related invention application in China. One important difference about patent prosecution between the U.S. and China is related to a product claim directed to a product such as computer, intelligent terminal or the like only involving into improvement of software. In brief, the difference is in “intangible” product in China and “tangible” product in the U.S.

The “GPE”, Chapter 9 provides a way of drafting a product claim defined by a group of software functional modules on the basis of a computer program flow described in the specification or on the basis of a method claim reflecting the computer program flow. Such a claim may be called “intangible-style” product claim by the author of this article, and the claimed product is an abstract, virtual device realized mainly through the computer program described in the specification, rather than an entity device realized mainly through hardware. When a Chinese examiner examines whether such “intangible-style” product claim is supportive by the specification and whether it is clear under Article 26.4 of Chinese Patent Law, he or she will consider, directly based on the above provision of Chapter 9, the “GPE”, the protection scope of such claim just covers a solution realized by software, and thus is supportive by the specification and is clear. The author of this article calls this examination manner “special manner” dedicated to an “intangible-style” product claim.

In contrast, the USPTO emphasizes on tangibility of a claimed product, and carefully examines whether there exists functional and structural relationship between the claimed product and software, algorithm and etc. Such a claim claiming a tangible product is called “tangible-style” product claim by the author of this article.

However, in China, such a “tangible-style” product claim often faces some examination opinion that is not easily understandable by applicant.

 

Case 4 [claim 19 of U.S. Patent No. 7,469,381 in the case Apple v Samsung]

“A device, comprising:

a touch screen display;

one or more processors;

memory; and

one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the programs including:

instructions for displaying a first portion of an electronic document;

instructions for detecting a movement of an object on or near the touch screen display;

instructions for translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion, in response to detecting the movement;…”

 

Case 5 [amended from Case 4]

“A device, comprising:

a touch screen display;

one or more processors;

memory; and

one or more programs, wherein the one or more programs are stored in the memory and configured to be read by the one or more processors in order to execute:

step of displaying a first portion of an electronic document;

step of detecting a movement of an object on or near the touch screen display;

step of translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion, in response to detecting the movement;…”

 

Case 6 [amended from Case 54]

“A device, comprising:

a touch screen display;

one or more processors;

memory, wherein the one or more programs are stored in the memory;

wherein the one or more processors comprising:

means for displaying a first portion of an electronic document;

means for detecting a movement of an object on or near the touch screen display;

means for translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion, in response to detecting the movement;…”

Because the claimed product in any of Cases 4-6 is not drafting the way completely corresponding to the flow of the computer program required by Chapter 9, the “’GPE”, the claimed product will be deemed as  an entity device, not an abstract, virtual product. In face of such a claim to assess whether the protection scope of the claim is supported by the specification and whether the claim is clear, the examiner will not follow the above “special manner” under Chapter 9, the “GPE”, instead, he or she will follow the general manner provided in Chapter 2, the “GPE”。

In detail, Cases 4-5 may be rejected for lack of clarity under Article 26.4 of Chinese Patent Law with a rationale by the Chinese examiner that limitations such as program, instruction, etc. don’t belong to structural or method features used for defining the structure of a processor.

Case 6 may be rejected for not supported by the specification under Article 26.4 of Chinese Patent Law,due to its functional definitions such as “means for displaying a first portion of an electronic document” . The rationale is the function means is considered as covering all modes realizing the function such as “displaying displaying a first portion of an electronic document”, while the specification only discloses specific mode(s) using a computer program to realize the function, therefore one with ordinary skill in the art cannot reasonably predict using other equivalent mode(s) such as hardware mode not described in the specification to realize the function.

As a result, in China a product claim, directed to a product such as computer, intelligent terminal or the like only involving into improvement of software, needs be drafted as a product claim only consisting of a group of virtual software functional modules completely corresponding to steps of the computer program flow disclosed in the specification or corresponding to steps of a method claim reflecting the computer program flow. Such a product claim can avoid or overcome the above examination opinion. Herein Case 4 is taken for example to illustrate one way of amending.

Case 7 [amended from Case 4]

“A device used in an intelligent communication terminal, the terminal comprising: a touch screen display; one or more processors; memory, wherein the one or more programs are stored in the memory;

wherein the device comprises:

means for displaying a first portion of an electronic document;

means for detecting a movement of an object on or near the touch screen display;

means for translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion, in response to detecting the movement;…”

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