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Tao CHEN
Fanghua ZHOU
Chinese Patent Attorney
Electronic Engineering Department
Linda Liu & Partners
In China, a special type of patent applications exists in the electronic field, i.e., invention applications relating to computer programs. The computer-program-related inventions refer to the solutions for solving the problems of the invention by wholly or partly relying on computer programs and controlling or processing external or internal objects of a computer through the computer executing the programs created according to the program flows.
The claims of such inventions applications mainly include the following types: claim relating to programs per se, claim relating to business methods, claim of “defining processor by method or program”, and claim of “method corresponding to product”. We will explain each of the four types in detail later.
In addition, utility models are more and more favored by applicants due to its advantages such as shorter cycle of examination and lower requirement for inventiveness, as compared to invention patents. When seeking for utility model patent protection for computer-program-related products, some key points need to be considered, which we will introduce as well.
1. Claim relating to programs per se
If a claim merely relates to an algorithm or mathematical computing rules, or computer programs per se, or computer programs recorded in mediums (such as tapes, discs, optical discs, DVD, or other computer-readable mediums) or rules or methods for games, etc., it falls into the scope of the rules and methods for mental activities and does not constitute the subject matter for which patent protection may be sought.
If all the contents of a claim, except for its title of the subject matter, merely relate to an algorithm, or mathematical computing rules, or programs per se, or rules or methods for games, etc., the claim essentially merely relates to rules and methods for mental activities, and does not constitute the subject matter of patent protection. However, if the improvement of a claimed medium lies in its physical characteristics, for example, layer composition, magic channel spacing, materials, etc., it does not belong to the cases mentioned above and can be protected by patent.
2. Claim relating to business methods
Invention applications relating to business methods can be classified into those related to pure business methods, and those related to business methods in a broader sense which include administrative management, payment scheme, business marketing, shopping, signing bills, auction, financial investment, tax treatment, insurance, healthcare services, tourist services and legal services. Invention applications of pure business methods refer to those with pure business methods as the subject matter. Invention applications relating to business methods in a broader sense refer to those with the subject matter of implementing business methods by using computer and network technologies.
The patent examination of business method patents in China has gone through the following four periods in history:
(1) Before October 2004
Before October 2004, the State Intellectual Property Office of China (SIPO) attempted to exclude such applications from the subject matter of patent protection by defining them as “rules and methods for mental activities” as prescribed by Article 25 of the Chinese Patent Law. Examiners adopted the following practice during examination: analyzing and reasoning the “three technical factors” (i.e., technical problem, technical means and technical effect) of the application, and rejecting it on the ground that it belongs to “rules and methods for mental activities”.
(2) From October 2004 to December 2008
SIPO put forward in October 2004 a rather explicit examination policy which is: invention application of pure business methods shall be directly excluded in accordance with Article 25.1 (2) of the Chinese Patent Law; for invention application relating to business methods in a broader sense, the examiner shall focus on determining whether or not the invention is a rule or method for mental activities and whether or not it constitutes a technical solution, in order to determine if it constitutes the subject matter of patent protection. The methodology of examination is: objectively determining the actual contribution of the invention as compared to a closest prior art through three aspects: the problem to be solved, the means adopted, and the effect achieved.
(3) From January 2009 to 2012
After 2009, SIPO proposed three coexisting guidelines for examination: (1) determining whether or not an application constitutes the subject matter of patent protection based on the background part of the description or the common knowledge; (2) alternatively, making the determination by comparing the application with a reference obtained from searching; and (3) novelty or inventiveness of the application may be discussed based on the prior art reference. In practice, examiners mostly follow the first guideline in examining such applications.
(4) After 2013
At present, SIPO holds the following way of thinking for the examination of patent application relating to business methods:
Step A, determining whether or not the present application constitutes the subject matter of patent protection. If the claimed solution is a pure business method and does not have any technical means, the application does not constitute the subject matter of patent protection.
Step B, examining novelty of the present application. If the claimed solution comprises technical means, then the present application constitutes the subject matter of patent protection, and shall be examined of novelty.
Step C, examining inventiveness of the present application. If the claimed solution possesses novelty, then it shall be examined of inventiveness. During the determination of inventiveness, the problem actually solved by the solution shall be determined based on the distinguishing features; if the problem does not belong to technical problems, then the present application does not make technical contribution to the prior art, thus does not possess inventiveness; and if the problem belongs to technical problems, then whether or not the solution to the technical problem is obvious shall be determined. To be noted that, if the problem determined based on a distinguishing feature does not belong to technical problems, some examiners may directly identify the distinguishing feature as common knowledge.
3. Claim of “defining processor by method or program”
Many invention applications relating to computer programs merely improve the prior art on methods or programs per se. However, as China does not protect claims with the title of the subject matter as programs per se or the storage medium defined by programs, product claims, which include processor/processing device for executing programs or methods, are commonly seen. Such type of product claim is generally drafted in the following way.
For example, “An electronic device comprising a multimedia play unit and a processor; the processor:
receives a multimedia sequence;
acquires a first bitrate of a first frame header from the received multimedia sequence;
predicts a first length of a first frame comprising the first frame header by a formula employing at least parameters comprising the first bitrate and a proportion of a second length to a second bitrate of a second frame header prior to the first frame header; and
directs the multimedia play unit to play frame data of the first frame according to the predicted first length of the first frame.”
For product claims drafted in such way, the feature of method defining processor is deemed as the feature of function, for which the Guidelines for Patent Examination does not provide specific provisions concerning the way of examination. SIPO used to hold that such feature of function would not be supported by the description on the following grounds:
“①Usually, for product claims, structural feature shall be provided and features of function shall be avoided as far as possible to be used in defining the invention. It is only when a certain technical feature cannot be defined by a structural feature, or it is more appropriate to define it by a functional feature, and the function can be directly and affirmatively verified by experiments or operations as stated in the description or by customary means in the art, that definition by features of function in a product claim can be permissible.
②The description merely discloses the specific way of using the progress of computer programs to realize said function and does not contain any contents of realizing the function with hardware or other ways.
③When realizing a certain function, a person skilled in the art needs to pay creative labor in choosing the way of realizing, i.e., whether realize wholly by software, wholly by hardware, or partly by software and partly by hardware circuit. Where an applicant only discloses realizing the present application by way of computer programs, if ways of hardware or of combination of software and hardware, which do not belong to the contribution made by the applicant, are included in the scope of protection of the present application, technical innovations after the filing date would be hampered.
④The present application essentially merely improves the prior art in the function per se and does not relate to the change of product structure, therefore shall only obtain corresponding method claim.”
Despite all the above, SIPO has changed its view towards such claims; it tends to accept such drafting way of such claims and considers that the functional limitation of processor can be supported by the description on the following grounds:
“①Processors at present are basically commonly known integrated circuit with specific internal structural features that are hard and unnecessary to express in parameters and structural features; they can be defined with features of function.
②Where the description has disclosed an embodiment of using processor to execute the program so as to realize the function, such embodiment can support the current claim.
③A person skilled in the art can consider using ways of software, hardware or their combination to realize the function according to various factors including design requirement, cost and operating speed; as long as the product can realize the function, corresponding technical problem can be solved. Therefore, a person skilled in the art can reasonably predict that in addition to realizing the function with computer programs, the product can be achieved by all equivalent substitute methods or obviously modified methods.
④At present, the Chinese Patent Law provides different protections for the two types of patents, i.e., method and product. In order to give patentees more comprehensive protection, it is reasonable to accept such way of drafting on the operational level.
⑤For claims with functional limitations, in the stage of infringement trial, the court shall determine the content of the technical feature according to the specific way of implementation of the functions or effects described in the description and drawings or an equivalent way of implementation; thus acceptance of such way of drafting of functional limitation claims will not bring unjustified benefits to the applicant.”
Therefore, SIPO has accepted the drafting way of “defining processor by method or program” and examined it in the same way as for a general claim.
However, Article 4 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases provides that “for technical features described by function or effect in a claim, the people's court shall determine the content of these technical features according to the specific way of implementation of the functions or effects described in the description and drawings or an equivalent way of implementation.”
As method limitation to processor is deemed as functional limitation, i.e., describing technical features by function or effect, thus in the stage of determination of infringement, the scope of protection shall be determined together with the specific way of implementation of the description. Therefore, possibility exists where the court believes that the scope of protection of the product claim drafted in the above way cannot be determined, hence the patent right cannot be enforced.
In the recent years, a typical case involving such type of claim is the patent infringing dispute between Nokia and Huaqin. The related claim is as follows: “a terminal equipment defined by claim 6, characterized in: said terminal equipment being configured as: selectively apply said data transfer method to message editor for inputting message; said terminal equipment being configured as: transferring said message to data transfer application programs supporting the selected data transfer method based on the choice of said data transfer method executed in the said message editor; and said terminal equipment being configured as: transferring said message to the telecommunication network according to the data transfer protocol used by said data transfer application programs.”
Regarding the scope of protection of the above claim, the court held:
The embodiments disclosed by the description of the disputed patent are all descriptions regarding methods, steps and functions. The description of the disputed patent merely simply states that above methods and steps can be applied to mobile station (MS) or message editor (ED), and that said innovative methods can be implemented via solutions of software, hardware or their combination; however, the description and drawings do not contain contents concerning the specific technical means of how to apply the above methods and steps to MS or ED. That is, the description and drawings of the patent do not disclose the specific way of implementation for the terminal equipment and message editor to “be configured as” realizing corresponding functions. Therefore, according to Article 4 of the above judicial interpretation, the content of the technical features defined by “being configured as” in claim 7 of the disputed patent cannot be determined, thus the scope of protection of claim 7 of the disputed patent cannot be determined either.
Therefore, when using claims drafted in the above ways, the description should disclose the way of implementation in hardware or combination of software and hardware if possible, apart from providing the way of implementation through the execution of computer programs. In this way, the circumstance where the scope of protection cannot be determined in the stage of patent right enforcement can be avoided to the greatest extent.
Unfortunately, there are no other cases concerning the determination of the scope of protection for claim of “defining processor by method or program”. We will keep an eye on relevant updates.
4. Claim of “method corresponding to product”
Chapter 9, Part II of the Guidelines for Patent Examination of China provides a special type of claim, that is, each component of the product claim corresponds to each step and execution sequence thereof of the method claim (or the progress of computer program described by the description).
If an apparatus claim is drafted based on computer program flow, i.e. in a way corresponding to each step of the program flow or closely matching a process claim reflecting such program flow, in other words, each component in the apparatus claim completely corresponds to each step in the computer program flow or in the process claim, then each component in the apparatus claim shall be regarded as function modules required for realizing each step. The apparatus claim defined by such a group of function modules shall be regarded as a function module architecture that realizes a solution mainly through the computer program described in the description rather than tangible devices that realize the solution mainly through hardware.
For example, claim 1: a method for realizing network printing, comprising the following steps:
Step A;
Step B;
Step C.
Claim 2: a device for realizing network printing, comprising:
Device for realizing Step A:
Device for realizing Step B:
Device for realizing Step C:
Therein, product claim 2 completely corresponds to method claim 1, thus SIPO would regard claim 2 as the function module architecture made up of computer programs rather than a device made up of hardware structure.
As shown above, SIPO provides a way of drafting for specifically protecting program products. As long as the product claim is drafted in the above way, SIPO will consider that the components of the claim do not belong to functional limitation; instead, they are function modules of the program product. Such product claim actually protects a program product.
Therefore, even though China does not protect claims with the title of the subject matter of programs or storage mediums for storing computer programs, yet programs per se can be protected by using the above way of drafting. According to the view of SIPO, if a product claim drafted in such a way is granted, a product will fall into the scope of protection of said claim as long as it stores the corresponding computer program.
Nevertheless, China still has no case showing how the court determines the scope of protection for a product claim that completely corresponds to a method. We will keep a close eye on such cases.
5. Utility model application relating to computer programs
Article 2.3 of the Chinese Patent Law prescribes that utility model means any new technical solution relating the shape, the structure, or their combination, of a product, which is fit for practical use. For products relating to computer programs, the improvement may lie in the hardware, in the software, or in both software and hardware.
In the practice of Chinese patent examination, examiners of the Chinese Patent Office generally assert that computer program is a method, and a claim of a utility model application containing improvement on computer programs equals to containing improvement on method. As utility model patents protect technical solutions which improve on products rather than methods, the technical solution that improves computer programs cannot be granted with a utility model patent.
There is still no corresponding case concerning whether or not the product relating to computer software constitutes the subject matter of utility model patent protection. However, we can see the attitude of the Chinese Patent Office regarding the protection of products relating to computer programs from some decisions on invalidation made by SIPO.
For example, SIPO pointed out in the No. 27113 Examination Decision on Request for Invalidation that the petitioner believed that “virtual button” per se defined in the following claim 3 did not have shape and/or structure, nor was it an entity occupying certain space, thus did not constitute the subject matter of utility model patent protection and did not comply with Article 2.3 of the Chinese Patent Law.
3. The mobile terminal with the function of self-timer as defined in claim 1, characterized in: said shutter button of self-timer is virtual button.
The collegial panel asserted that claim 3 was dependent on claim 1, and the aforementioned content has already commented that claim 1 improved on the product structure over the prior art. Although claim 3 further defined that the shutter button of self-timer was virtual button, yet for a person skilled in the art, the virtual button can be realized via known computer programs of the field, thus the overall technical solution claimed by claim 3 was merely the improvement on structure of product, and claim 3 constituted the subject matter of patent protection as prescribed by Article 2.3 of the Chinese Patent Law.
As shown above, the improvement of the product on hardware (shape, structure or their combination of the product) instead of the improvement of the product on software shall be reflected in claims of utility model application relating to computer programs; otherwise the application will be difficult to obtain the protection of utility model.
Moreover, if an applicant expects to protect the product relating to computer programs with both invention ad utility model at the same time, such as protecting the improvement on software with an invention patent and protecting the improvement on hardware with a utility model patent, it is recommended to apply for both invention and utility model on the same day, reserve at least one same claim in the claims of the two applications and state in each of the two application that the other application has been filed in compliance with Section 6, Chapter 3, Part II of the Guidelines for Patent Examination of China.
As utility model application has a shorter cycle of examination, generally it may be granted before the invention patent application. In the following examination of the invention application, if the invention application complies with other conditions for the granting of patent right and still contains the claim having the same scope of protection as the claim in the utility model patent, the examiner of the invention application may find the granted utility model patent through searching and point out that the invention application contains a claim with the same scope of protection as the claim of the utility model patent, thus does not comply with Article 9.1 of the Chinese Patent Law. Under such circumstance, the applicant may choose to give up the granted utility model patent, or delete or revise the claim of the invention application with the same scope of protection as the claim of the utility model patent so as to eliminate the above defect.
Of course, the above method of applying for both invention and utility model can apply not only to invention-creation relating to computer programs, but also to any invention-creation in other fields.
With regard to our above opinions on patent applications relating to computer programs, if you have any doubts or questions, please do not hesitate to let us know.
