Deep & Far Newsletter 2014 ©
Summary of the amendments of Taiwan Patent Examination Guide on Part II, Chapter 12, Computer Software Related Invention - II
Yu-Li Tsai, Patent Attorney
¡½ Bachelor of EE from National Taiwan University
¡½ Master of Telecommunications from National Taiwan University¡½ IP Master from New Hampshire Law School (Franklin Pierce
3. Simply Utilizing Computer
Simply adding computer software or hardware in a claim cannot qualify a claimed subject matter (e.g., mathematical formula, business model, etc.) which originally does not meet the definition of an invention to be found as meeting the definition of an invention.
Regarding an implementation method with the aid of computer software or hardware resources in a claim, if one only utilizes the computer (or network, processor, storage unit, input/output device) to replace manual operations, and as compared to the manual operations, s/he only utilizes the computer¡¦s inherent capability of rendering faster speed, high accuracy, high throughput, etc. at the time of filing, then it is difficult to say this implementation method has a technical idea. At this time, simply using a computer software or hardware cannot cause invention contents which do not have a technical nature to have a technical nature.
However, if the invention as a whole has a technical feature, for example, overcoming some specific technical difficulties, or solving a problem in a technical field, to produce a relevant efficacy for the whole system, for example, reinforcing the security of an information system, increasing the execution efficiency of an information system, enhancing the image recognition accuracy or strengthening system stability, etc., then it should be held as meeting the definition for an invention.
While judging, one must consider not only whether the computer software or hardware is a necessary part of the problems intended to be solve, but the specific nature of the computer software or hardware. If, when solving the problems, the computer software or hardware is unnecessary, but can be replaced with manual operations, or implemented by a known general purpose computer without the aid of special algorithms, then the computer software or hardware is not a meaningful limitation and cannot render a claimed subject matter which originally does not meet the definition of an invention to meet the definition of an invention. However, if certain method step needs the aid of human mental activity to be implemented, and the invention utilizes a specialized algorithm to substitute for the human mental activity, then the algorithm can causes the overall invention to have a technical nature.
4. Means-Plus-Function Language and Enablement Requirement
When a claim is drafted in means-plus-function language or step-plus-function language, the judgment of the enablement requirement of the specification is as follows:
Regarding a computer software related invention drafted in means-plus-function language, if what is defined is a general operation function, then disclosing a general purpose computer in the specification can satisfy the requirement of disclosing the corresponding structure, such as a general storing or transmitting means; however, even though the general purpose computer can be easily conceived by the skilled person in the art, one must not fail to clearly disclose it, or the means in the claim will correspond to nothing.
If a specialized operation is executed, then the corresponding structure disclosed in the specification shall not merely be a general purpose computer or a microprocessor, but should include a specialized algorithm achieving the function, and the algorithm must be sufficiently disclosed in the specification. The algorithm can be expressed in any understandable way, for example, a flow chart, a written description, mathematical expressions, or other ways providing sufficient structure, but it is unnecessary to demonstrate the program code or disclose minute details of the algorithm.
Merely reciting the name and function of a claimed means into the specification or simply describing the results intended to be achieved rather than the ways to achieve the results does not clearly disclose the algorithm. If the specification only recites a name of a specialized computer, for example ¡§bank computer¡¨, or some undefined computer system unit e.g., ¡§access control management module¡¨, logic, program code, or component, etc., then it is essentially merely a black box designed to implement the function and does not meet the enablement requirement. Therefore, it is required to describe in detail how the computer or processor computes and implements the functions in the claim to make it clear.
When the specification discloses the algorithm, the skilled person in the art of the invention then determines whether it is sufficiently disclosed, that is, whether the skilled person in the art can clearly understand how to design the program such that the computer can implement the essential steps disclosed in the specification, namely, the skilled person in the art can realizes that the algorithm can be used to achieve the claimed function in accordance with the specification. However, even though the entire algorithm can be completed by the skilled person in the art, one still cannot fail to disclose it in detail because when the applicant uses the means-plus-function language, he/she shall fulfill his/her burden to clearly and sufficiently disclose the invention.
Because interpreting a means-plus-function claim includes the structure, material or operation described in the specification corresponding to the function and its equivalent scope, when the specification violates the enablement requirement, the claim is indefinite and is not supported by the specification.