Rejection of computer software-related inventions in Taiwan
Many software-related patent applications are rejected on the ground of non-obviousness. Yen-Bin Gu of Saint Island International Patent & Law Offices provides some tips for applicants
The rapid development of cutting-edge technologies, including artificial intelligence, big data, and blockchain, is radically changing the world.
Reflecting the need to protect these new inventions, the number of patent applications for computer software-related inventions has increased significantly in Taiwan.
However, a high proportion of computer software-related inventions are rejected for not possessing non-obviousness.
In determining whether an invention is non-obvious over the prior art, the Taiwan Intellectual Property Office (TIPO) searches to locate all relevant prior art references. One prior art reference is chosen as the primary reference.
Only if it is found that the located references can be combined in an obvious manner shall examination be continued to determine whether a prima facie case of obviousness is established.
Given that a computer software technology can usually be applied in various technical fields, it would be premature to conclude that a person skilled in the art would not be motivated to combine the references purely on the basis that the cited references are not relevant.
TIPO revised the old examination guidelines in 2021, to rectify these inadequacies (among others).
According to the revised examination guidelines, a number of parameters should be considered in determining whether a person skilled in the art would be motivated to combine two or more references regarding a computer software invention.
It is not appropriate for the applicant to contend that an ordinary person skilled in the art would not have the motivation to combine the cited references by simply stating that cited references are irrelevant; instead, detailed and sound reasons should be provided.
Moreover, a computer software-related invention shall be denied non-obviousness if it is a simple modification to the technical aspects of a reference. These include:
An adaptation of a prior art into a new form;
A systematisation of the methods of operation carried out by humans;
Using software to achieve a function performed by prior hardware technology;
An ordinary knowledge at the time of filing of patent applications for the reproduction of the virtual space of the computer;
An application or modification of ordinary knowledge at the time of filing, and
Characteristics that do not contribute to any technical effect.
As mentioned above, computer software inventions are more prone to rejection for want of non-obviousness.
For instance, in the case of an application for a neural network, if (1) the content of the invention is only the use of a general method of deep learning to generate some data and apply it to some specific field; and (2) there are already results from the use of conventional algorithms by prior techniques and the results have been applied to some specific field, the examiner may combine this prior technique using conventional algorithms with the prior art related to deep learning, even if the two prior techniques do not fall into the same or analogous technical fields.
In addition, the examiner may not cite any of the prior techniques related to deep learning and determine in a straightforward way that the claimed neural network is a simple modification of conventional algorithms.
Tips for applicants
In response to the rejection of a computer-related invention, apart from making necessary amendments, to increase the odds of securing a patent, applicants are advised to:
Reiterate the advantageous effects of the invention over the relevant prior art as set out in the specification;
Clarify that the invention and the cited references have a substantial difference in technology, and thanks to such difference an ordinary person skilled in the art would not contrive to modify the references; and
Confirm that the references did not provide any teachings regarding making potential changes to the technology and therefore an ordinary person skilled in the art would not have an incentive to make a modification.