Rejection of computer software-related inventions in Taiwan
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Rejection of computer software-related inventions in Taiwan

Sponsored by


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.

TIPO’s approach

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:

  1. An adaptation of a prior art into a new form;

  2. A systematisation of the methods of operation carried out by humans;

  3. Using software to achieve a function performed by prior hardware technology;

  4. An ordinary knowledge at the time of filing of patent applications for the reproduction of the virtual space of the computer;

  5. An application or modification of ordinary knowledge at the time of filing, and

  6. 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:

  1. Reiterate the advantageous effects of the invention over the relevant prior art as set out in the specification;

  2. 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

  3. 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.

more from across site and ros bottom lb

More from across our site

The Grand Board said the applied-for mark would ‘trivialise’ one of the deadliest pandemics in history
Tim Chen Saulsbury explains why single-craft artisans inspire him and how, even at home, he’s never too far from another IP lawyer
The firm also plans to build an entertainment practice group and up its IP and antitrust offerings with a focus on foreign clients
An intimate understanding of a client’s sector is essential to winning new business, a survey of over 28,000 corporate counsel reveals
Counsel say a Federal Circuit ruling on the obviousness test for design patents may increase the time IP owners spend defending their rights
With INTA Annual Meeting over for another year, here are a few things Managing IP learned after attending IP’s biggest party
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Four sources reveal which tools they have been using – or building – to help them with a range of tasks from invention generation to claim sufficiency
Managing IP reveals Wednesday's highlights, including a discussion on how AI is helping lawyers improve their "gut instinct" trademark decisions
Managing IP reveals Tuesday’s highlights, including an illuminating discussion celebrating women in the workplace and the challenges that remain
Gift this article