On March 2 2017 the State Intellectual Property Office (SIPO) issued a decision amending the Guidelines for Patent Examination. In accordance with this decision, the revised guidelines came into effect on April 1 2017.
The revised guidelines explicitly prescribe that an invention involving a computer program is not the same as a computer program per se, which broadens the scope of eligible subject matters in this field. An invention involving a computer program refers to a technical solution which is wholly or partly based on the processing flow of a program to control or process the external or internal objects of a computer. Conversely, a computer program per se refers to:
- a coded instruction sequence;
- a symbolised instruction sequence;
- a symbolised statement sequence;
- source programs; or
- object programs.
One acceptable format for claims in relation to computer programs can be drafted as "medium + computer program flow".
As regards the implementation of the new provisions, the SIPO announced that "there is no transitional period, and they are applied to all the pending applications". In other words, the new guidelines apply to all new applications filed on or after April 1 2017, as well as all pending applications that are in the examination stage.
Following the implementation of the revised guidelines, it is recommended that patent attorneys and applicants pay attention to patent applications which involve computer programs. When such applications are examined, there will be opportunities to make appropriate amendments, provide statements and file divisional applications in order to ensure that the related subject matter may be protected under patent law.
Below is an example patent application for an invention to demonstrate how the new patent guidelines work. In this application, independent Claim 11 asks for:
"A non-transitory computer readable medium having stored thereon software instructions that, when executed by a processor, cause the processor to generate control signals for controlling exterior lights of a controlled vehicle, by executing the steps comprising."
In the application, Claims 12-15 were dependent on Claim 11. The application examiner issued a first office action on February 24 2016, in which Claims 11 to 15 were objected to as belonging to the subject matter for which no patent rights could be granted. The examiner reasoned that all of the contents defined in Claims 11 to 15 related to a computer program per se. When responding to the first office action on July 8 2016, the applicant deleted Claims 11 to 15 to conform to the guidelines in place at that time.
Under the revised guidelines, Claims 11 to 15 can be eligible subject matters because they actually intend to protect the computer readable storage medium corresponding to the computer flow defined in each step of the method claims, and thus relate to the inventions involving computer programs rather than a computer program per se.
Taking advantage of the lack of a transitionary period for the implementation of the revised guidelines, the applicant, as recommended by a patent attorney, took the opportunity of responding to the second office action on May 23 2017 to add the deleted Claims 11 to 15 to the application. To facilitate the granting procedure, the applicant also submitted convincing arguments in support of the inventiveness of these claims over the prior art cited in the first office action. The examiner did not raise any further objections to these amendments – except some formality issues in the following office action and all of the claims, including Claims 11 to 15, were allowed.
In a separate patent application, Claim 15 asked for:
"A non-transitory tangible computer readable medium having stored thereon software instructions that, when executed by a processor within a vehicle, cause the processor to distinguish between tail lights of another vehicle and a flashing red stop light, by executing the steps comprising."
With regard to this application, the examiner issued a first office action on December 29 2016, which pointed out the following:
"Claim 15 and its dependent Claims 16-20 ask for a 'non-transitory tangible computer readable medium'; nevertheless, all contents defined in these claims merely relate to a computer program per se and substantially relate to rules and methods for metal activities which do not belong to the subject matter under the patent protection."
Since the deadline for responding to the first office action was May 13 2017, it would be possible to change the application according to the revised guidelines. The attorney advised the applicant to retain Claim 15 and the dependent Claims 16 to 20 by submitting the corresponding arguments. After this amendment, the examiner did not raise any further objections regarding the issue of ineligible subject matter in the second office action and merely raised inventiveness objections. At present, this application is under examination in order to determine inventiveness.
From the above examples, it can be seen that under the revised guidelines, patent application cases in which claims are drafted as "medium + computer program flow" have been successful.
Under the revised guidelines, when drafting claims involving technical solutions "wholly based on the process of computer programs", applicants can select one of the following claim formats:
- method claims;
- apparatus claims, including computer programs;
- program modular architecture claims; or
- "medium + computer program flow" claims.
These types of claims may be allowed. However, attention needs to be paid to the clarity of the claims entitled "program products", as such claims may be construed as having different meanings – for example including:
- programs per se;
- a medium which has a program stored on it; or
- an electronic device running a program.
If construed as one of the above, the claim's subject matter would be rendered unclear and therefore may not be permissible.
The revised provisions relax the restrictions as to the subject matter of an invention involving computer programs and provide a flexible route for filing patent applications. This enhances patent protection in China and is beneficial for both international and domestic applicants. In future practice, for patent applications for inventions in this field, applicants must pay more attention to substantive issues, such as novelty, inventiveness and claim support and, in particular, the inventiveness of the claimed invention.
For further information on this topic please contact Lili Guan at Wanhuida Peksung by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
