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As China pursues innovation-driven
development, IP issues are under
growing scrutiny. Multinationals
would be well advised to protect
their software by following best
practice when it comes to applying
for patents
By Li Xiang
Patenting software in
China
A multinational corporation needs a strong
and stable patent portfolio in China in
order to protect any software that it owns.
To acquire such rights, in-house counsel
should have comprehensive knowledge
of patent examination regulations for
computer program-related inventions,
along with a deep understanding of the
relevant rules and regulations. This
article provides a thorough analysis on
how to patent computer programs –
especially the subject matter – in China,
including specific patent examination
procedure and detailed explanations of
the related requirements, in order to
help users to understand and respond to
office actions from the State Intellectual
Property Office (SIPO) and draw a clear
line between patentable subject matter
and non-patentable subject matter. It also
sets out suggestions for drafting patent
applications for computer program-related
inventions in order to avoid rejection
and to help achieve a successful patent
portfolio in China.
Intellectual property in China
China’s market has been growing ever
since the country began to reform and
open up, particularly in fields such as
information technology, automobiles,
biotechnology, automation and green
energy. For multinational corporations,
China’s market is a key battlefield for
global success. And in recent years
the key to increasing market share or
competitiveness for multinationals in
China has been not only cost performance,
but also intellectual property.
Intellectual property, which has made
the United States a powerful and prosperous
nation, is now blazing a remarkable trail in
mainland China. According to SIPO’s latest
statistics, it received 825,000 invention
patent applications in 2013, up by 26.3%.
The annual number of applications for
invention patents in China – which
correspond to utility patents in the United
States – is now the highest in the world.
As China’s IP enforcement continues
to improve, more and more cases reveal the
true value and importance of intellectual
property in the Chinese market. Both
domestic and foreign companies have
noticed this and are sparing no effort to
create powerful patent portfolios in China.
The United States and Japan are the biggest
participants – according to the 2011 Annual
Report of Chinese Patents in Force, they
account for more than 35% of all valid
invention patents in China.
Running a comprehensive IP system in
a country means transforming competitive
mechanisms from product sales to IP
rights-product sales (as shown in Figure
1). This means that a company’s market
share depends not only on its product (or
cost performance), but also on the quantity
and quality of its IP rights. In other words,
commercial interests come from IP rights as
well as from products. HTC v Apple starkly
demonstrates the vital importance of strong
IP rights.
In order to ensure the early acquisition
of strong and stable IP rights, a company’s IP

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Copyright is automatically granted
and trade secret protection takes effect
after three related conditions are met.
However, a patent will not be granted until
an application has been filed with SIPO
and passes first a preliminary and then a
substantive examination, a process which
lasts 22 months on average and costs about
$600. In 2012 Microsoft raised eyebrows
when it filed over 785 patent applications
(including applications for invention
patents, utility model patents and design
patents) with SIPO. Multinationals should
make a considered decision before filing
multiple applications in this way.
Then, why patent for software?
Computer programs written in
computer programming language are a kind
of human logic, which is relatively easy to
disseminate from one skilled in the art to
another. Different computer programs can
be implemented to achieve the same target
and result, which tends to make copyright
protection virtually useless. For computer
software there is no such thing as know-
how, in the way that there is for chemistry
or biotechnology, which tends to make trade
secret protection useless. Patents, which
makes design-around difficult, are therefore
a reasonable protection choice for computer
programs, despite the cost.
Patent examination for computer
programs
For multinationals in computer-related
fields, how to acquire strong and stable
patent rights in China is not a new question,
but it remains a complicated one. The Patent
Law is revised or substantially amended
every eight years. It first entered into force
on April 1 1985, having been adopted at the
Fourth Meeting of the Standing Committee
of the Sixth National People’s Congress
on March 12 1984, and was amended in
1992, 2000 and 2008 respectively. Every
amendment has seen the law become
more mainstream, while maintaining its
own idiosyncrasies when it comes to the
examination of computer program-related
inventions. To see the whole picture, we first
need to discuss the substantive examination
of computer programs.
Examination procedure
As shown in Figure 2, a computer program-
related invention is first examined to
identify the eligibility of its claimed subject
matter, including “rules and methods
for intellectual activities” (Article 25.1.2
of the Patent Law); and to ensure that
the invention provides “new technical
solutions proposed for a product, a process
counsel should develop a deep understanding
of various IP laws in the company’s target
markets and develop a strategy for protecting
its products in different markets. For
instance, the IP counsel for a company
operating in the fields of computing,
computer software, computer hardware,
telecommunication, data processing or
automation (eg, IBM, Intel, Honeywell or
Microsoft) needs first and foremost to
understand the difference between Chinese
patent law and US patent law.
Protection for computer programs
Computer programs can be protected by
copyright according to Article 3 of the
Copyright Law, and can be registered under
the Registration of Computer Software
Copyright Procedures. Computer programs
can also be protected as trade secrets under
the Contract Law or by patents, as is the case
in the United States and the European Union.
Product 1
Product 1
Application
Product 1
Product 1
Product 2
Product 2
USPTO/SIPO IP rights
Product 3
Product 3
Consumer
Consumer
Sales
Sales
Figure 1. Transforming competitive mechanisms from product sales to IP rights-
product sales

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by a process or method steps and is to be
interpreted by an examiner as including all
different implementations of processors
which can achieve or perform those steps.
However, embodiments of processors in the
specification contain only descriptions of
computer programs (ie, software), but no
specific hardware, such as semiconductor
elements to compose the processor.
Moreover, people who are ordinarily skilled
in the art are incapable of determining other
equivalent technical solutions (eg, hardware
solutions that are not mentioned in the
specification) without a creative effort. This
can therefore constitute a reason for the
examiner to apply Article 26.4 to reject the
independent claim, as the “written claim
is not based on the written description” or
“support issue”.
In fact, this results in the rejection
of many computer program-related
inventions. It also illustrates the reason
for the emergence of virtual-device claims,
as described in Part II, Chapter 9 of the
2010 Guidelines for Patent Examination.
Virtual-device claims are found only in
China. So far, there has been no case law
involving such claims to provide guidance
on how to enforce or litigate them. If
an applicant can provide only computer
program embodiments in the description
and yet still wishes to draft a product claim,
a virtual-device claim is an easy option to
follow. Chapter 9 describes how to draft
such claims. However, how an examiner
conducts an examination under Article 26.4
deserves in-depth analysis.
Figure 3 illustrates the examination
procedure set out in Article 26.4. Procedure
P10, which is designed to examine whether
the invention described in the specification
and claims is based solely on computer
program flow, includes the following steps:
or the improvement thereof” (Article 2.2).
Article 25.1.2 sets out similar criteria to
the ‘abstract idea’ of US patent law, under
which a claimed subject matter is applied
not to the real world, but to human logic
per se (eg, a new way to play poker). A
claimed subject matter describing the
mechanisms of designing levels, balance of
weapons or races and game play in StarCraft
would be rejected by SIPO under Article
25.1.2. Article 2.2’s definition of ‘invention
patent’ is similar to the assessment of
‘technical character’ found in the European
Patent Convention. Under this, a solution
composed of computer program steps to
solve a management or a business problem
may not be a technical solution, as required
by Article 2.2.
Following the examination for claimed
subject matter, the computer program-
related invention is examined to ensure
that the “written claim shall, based on the
written description, contain a clear and
concise definition of the proposed scope of
patent protection” (Article 26.4) – which is
a different step from that taken by either the
US Patent and Trademark Office (USPTO) or
the European Patent Office (EPO).
Finally, computer program-related
inventions are examined under Articles
22.2 and 22.3 to check for novelty and
inventiveness (identical to the EPO’s
‘inventive step’) of the subject matter in the
written claims. Article 22.3 uses a three-
step analysis (from the EPO) to determine
the non-obviousness (from the USPTO)
of the subject matter in written claims, in
which the criterion of inventiveness lies
somewhere between that set out by the EPO
and the USPTO.
Of these three stages of examination,
those which that confuse foreign applicants
are the eligibility articles and Article 26.4.
Applying Article 26.4 to computer
program-related inventions
To illustrate Article 26.4 with a real
case, we have chosen Patent Cooperation
Treaty application WO2007092945,
which contains the following independent
claim: “An apparatus comprising: at least
one processor configured to perform
spectral shaping on modulation symbols to
obtain spectrally shaped symbols, and to
generate a single-carrier frequency division
multiplexing (SC-FDM) signal based on the
spectrally shaped symbols; and a memory
coupled to the at least one processor.”
The subject matter requires protection
for an apparatus which includes at least one
processor and a memory, which makes it a
product claim. The processor is described
Computer program –
related invention
A25.1.2
Eligibility Novelty and
inventiveness
Examination
procedure
A26.4 A22.2
A22.3A2.2
Figure 2. Computer program-related invention examination procedure

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matter of the claimed invention must be
patent eligible.
For example, in the case of an invention
involving management throw client/server
or browser/server software, technical
disclosures from colleagues in the R&D
department may include detailed business
logic of the software, which is not eligible
subject matter according to Article 5.1.2
because it lacks any technical features.
There is no definition of ‘technical
feature’ from SIPO or the People’s Supreme
Court, but normally scientific or technical
features (eg, hardware-related features and
data manipulation features) can help to
ensure that a technical feature is present.
When combined with technical features,
business logic is now embodied in functions
and interfaces. However, technical features
are not necessarily technical means, which
is crucial when it comes to composing
technical solutions. In order to qualify
as ‘technical means’, technical features
must perform or operate in accordance
with natural laws instead of social laws or
manmade rules.
For example, there is a function to
rearrange graphical user interface (GUI)
information and show GUI based on the
size and shape of a client screen, which
shows more readable GUI to users as in
201010108837.X. These technical features
operate in accordance with natural laws
that each client screen has a configuration
accessible through application program
interfaces, and that a full-sized GUI on a
client is more operable or readable than a
half-sized GUI.
Technical means in a solution also
require technical results, as well as
technical purpose (Article 2.2). In other
words, a technical means which is applied
to manipulate non-technical information
for a non-technical purpose only does not
fall within the definition of a ‘technical
solution’. Normally, technical solutions come
from features and advantages of computer
programs instead of operation manuals.
To be eligible, a solution based on
a computer program must demonstrate
features which operate in accordance with
natural laws or perform operations or
calculations on natural objects – including
matter, energy and information – which
changes the attributes of these objects or
generates new objects in order to reflect
man’s ability to change the natural world.
As for Article 26.4, a technical solution
based solely on computer-program flow
cannot yield a product claim.
The first way to make this support
a product claim is to include a detailed
• S11 to review various implementation
methods of invented technical solutions,
especially the relations between
computer programs and computer
hardware of invented technical solutions
disclosed in the specification.
• S12 to determine whether the
improvement of invented technical
solutions involves hardware structure
compared with the prior art.
• S13 to determine whether the
improvement of invented technical
solutions involves direct control from
computer programs to computer
hardware.
• S14 is based on the analysis of S11,
S12 and S13 to determine whether the
invention described in the specification
and claims is solely based on computer
program flow – if it is, then go to S15;
otherwise go to S16.
• S15 states that written claims can be
method or virtual-device claims, but
not product claims, which means that
Article 26.4 is ready to be used on such
applications.
• S16 states that written claims can be
method claims (ie, process claims) and
product types.
Patenting computer program-related
inventions
To patent a computer program-related
invention, there are at least five barriers
to cross – eligibility (Articles 2, 5 and 25),
clarity (Article 26.4), support (Article 26.4),
novelty (Article 22.2) and inventiveness
(Article 22.3) – as shown in Figure 2. While
there are tools that examiners can use to
reject and object to applications, there are
ways to prepare a patent application for a
computer program-related invention that
avoids obvious traps.
Overcoming barriers step by step
To draft a patent application for computer
program-related inventions, the subject
There is no definition of ‘technical
feature’ from SIPO or the People’s Supreme
Court, but normally scientific or technical
features (eg, hardware-related features and
data manipulation features) can help to
ensure that a technical feature is present

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performing a XXX-Algorism decryption
on the data block of the multimedia file
according to XXX-information from the
header” for reading method.
When it comes to monitoring data in
data-centred solutions, a method to solve
the ratio of the circumference of a circle
to its diameter using a computer program
is described in Part II, Chapter 9 of the
Guidelines for Patent Examination, with a
written claim such as the following:
A method to solve the ratio of the
circumference of a circle to its diameter
using computer programs, characterised in
that it includes the following steps:
• calculate the number of dots in a
square;
• calculate the number of dots in the
inner circle of the side square; and
• solve the ratio of the circumference of a
circle to its diameter using formula:
Σ count value of the dots in the circle
Σ count value of the dots in the square
×4
The guidelines offer the following
analysis of this method: “this solution
merely relates to a pure mathematical
computing method or rule executed by
computer programs, and is essentially an
abstract human thinking method, therefore,
this invention application belongs to
rules and methods for mental activities
as provided for in Article 25.1(2) and is
not patentable subject matter.” However,
there is no concrete analysis or detailed
explanation why Article 25.1.2 applies to
disclosure within the specification on the
level of circuits or well-known integrated
circuits in the art (e.g., 200810128132.7,
which claimed the priority of JP2007-
1768632007/7/5).
Another way would be to include a
detailed disclosure within both claims and
specification showing the creative software-
hardware interactions or software-caused
changes in hardware (eg, Patent Application
200710147817.1, which claimed the priority
of JP 2006-260598, and Patent Application
200910036855.9).
Tools for reviewers
If you are not responsible for drafting patent
applications, but merely review the work of
a patent agent, you have no opportunity to
implement these steps. A tool is needed to
adjust improper applications or claims and
identify claims with eligibility issues.
Patent mining in a computer-related
field is designed not only to generate
technical disclosures, but also to transform
non-technical solutions into technical
solutions. Before filing an application with
SIPO, it is advisable to conduct a quick
check to ensure that all legal barriers have
been overcome, especially with regard to
eligibility issues.
For computer program-related
applications, a quick self-check and
adjustment method emerges by rearranging
solutions in written claims from new
perspectives. This includes transforming a
user-oriented solution to a device-oriented
solution and transforming an effect-
centred solution to a data-centred solution
if necessary.
In practice, a device-oriented solution
is more acceptable than a user-oriented
one and a data-centred solution is more
acceptable than an effect-centred one.
For example, a user-oriented solution
may be drafted as: “inputting a username
and a password to log in client system.” Its
corresponding device-oriented solution
may be rearranged as follows: “receiving
and verifying a username/password pair
from the user.” An effect-centred solution
may be drafted as: “performing multimedia
data encryption and decryption, which
improves the security level of software
and ensures the enforcement of digital
copyrights.” Its corresponding data-centred
solution could be rearranged as: “acquiring
the header of a multimedia file, and
performing a XXX-Algorism encryption
on the data block of the multimedia file
according to XXX-information from the
header” for writing method and “acquiring
the header of a multimedia file, and
A26.4
Implementation in
embodiments
Changes of hardware?
Controls of hardware?
S14
S15
Method claims and
virtual-device claims
Method claims and
product claims
S16
y n
Only
disclose computer
programs
S12
S11
S12
P10
Figure 3. Examination procedure set out in Article 26.4. Procedure P10

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confer the technical character of a solution
as required for an eligible computing
algorithm.
For example, a method of automatically
computing the co-efficient of kinetic
friction using computer programs is
described in Part II, Chapter 9 of the
guidelines, with a written claim that
might include: “A method of automatically
computing the coefficient of kinetic friction
μ using computer programs, characterised
in that it includes the following steps:
(1) calculating the ratio of the position
variables, S1 and S2, of the friction plate;
(2) calculating the logarithm, logS2/S1, of
the ratio S2/S1; (3) solving the ratio of the
logarithm logS2/S1 to e.”
Although the kinetic friction in this
claim is a physical quantity, there is no
industrial target to show the technical
effect in the real world. One possible
way to upgrade this claim is to apply
this computing algorithm to a specific
engineering field like so: “A method of
controlling a product pipeline using
computer programs, comprising: (1)
receiving position variables S1 and S2
respectively from a first sensor and a
second sensor at a friction plate of the
product pipeline; (2) computing coefficient
of kinetic friction μ by μ= (log S2 – log S1)
/e; and (3) if μ is equal to or greater than
XXX, switch a XXX-type electric motor to
a ZZZ-type electric motor on the product
pipeline to keep normal operation of the
product pipeline.”
This example – which is an imaginary
scenario and assumes that there is no
similar prior art – is not intended to
act as a broad claim, but only to show
how a computing algorithm can be made
eligible for patentability with the right
presentation.
Automation
Almost all technical fields have enterprise
resource planning software to help
manage business logic and facilitate
communications, especially in automation
where computer software and hardware are
directly used to control mechanical and
electrical equipment.
For computer program-related
inventions in automation, one way to draft
claims is to construct a solution realising
external technical data processing through
the execution of a computer program. This
is a technical solution and thus patentable
subject matter. For example, there is a
method of removing image noise based on
the 3θ principle in probability statistical
theory described in Part II, Chapter 9
such a claim.
From the perspective of the technical
character of the data within the solution,
data processed in this solution includes
the dots in the square, the dots in the inner
circle and the ratio of the circumference
of the circle to its diameter. All of these
are conceptual entities or abstract
mathematical definitions and show no
connection to any real entity in the physical
world. Therefore, the data’s technical
character is not conferred, thus making the
data flow in the solution which processes
this data subject to Article 25.1.2.
Proper ways for specific technical field
Computer programs have different forms
in different technical fields, including
application and system software,
computing algorithms, computer networks,
telecommunication and automation. There
are proper ways to draft applications and,
especially, claims in each field.
According to Wikipedia, an algorithm
in mathematics and computer science
is a step-by-step procedure which is
used for calculation, data processing and
automated reasoning. For most engineers,
algorithms are abstract solutions for
abstract problems, often shown as pure
logic steps accompanying abstract concepts.
Computing algorithms are usually the key
points of inventions in various software
products and even hardware products.
Many examples in the Guidelines to
Patent Examination show which kinds of
computing algorithm are patentable and
which are not, but there are unlikely to be
any positive instructions on eligible subject
matter from SIPO. National patent offices
are in a position to offer guidance on such
issues, since detailed instructions change as
society develops and productivity improves.
For example, in the 1990s patents were not
used to protect computer programs in the
way that they are now.
More recently patents have had to fulfil
industrial targets – including functional
advantages, performance improvement, cost
saving or reduced complexity – in order to
A solution
Technical
feature
A25.1.2
Natural
laws
Technical
means
Technical
results
Technical
purpose
A2.2
Technical
solutions
Inventiveness
Novelty
A26.4
A22
Clarity and
support
A technical
solution
Allowable
solution
✔
✔ ✔
✔
Figure 4. The process for patenting
computer program-related inventions
For computer program-related
inventions in automation, one way to draft
claims is to construct a solution realising
external technical data processing through
the execution of a computer program

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possible to manufacture a potentially
allowable solution in the claims as well as
in the specification of a patent application
before filing this with SIPO, which saves
time and also prosecution costs.
Future trends
After SIPO granted a patent for
an electronic-monetary system
(ZL92113147.X) in 2002 to Citibank,
attention has been drawn to business
method patents in China, including
whether such methods are patentable,
how to determine their inventiveness and
the examination procedure for a business
method patent application.
According to the current internal patent
examination guidelines, a business method
patent may be examined and rejected if:
• the problem solved in the claimed
solution is determined to be non-
technical according to the background
information provided by the applicant or
common knowledge in the art (Article
2.2 – non-patentable subject matter);
• the alleged problem of the claimed
solution is a technical problem, but it
has been solved in the prior art in the
same way as with the claimed solution,
in which case the real or objective
problem solved in the claimed solution
can be determined as a non-technical
problem leading to a rejection based on
Article 2.2; or
• an examiner directly performs
an examination for novelty and
inventiveness before drilling into the
subject matter of the claimed solution
and rejects the claimed solution with
prior art or prior art on the basis of
Articles 22.2 and 22.3.
of the guidelines, with a written claim
such as: “A method for removing image
noises characterised in that it includes the
following steps: obtaining every pixel data
of the image to be processed in a computer;
computing the grey mean value and the
grey variance of the said image from the
grey values of all the image pixels; reading
the grey value of all the image pixels, and
determining whether the grey value of
every pixel is within three times variance
above or below the mean value, if yes, then
not modifying the said pixel grey value,
otherwise, regarding the pixel as a noise and
removing it by modifying its grey value.”
For computer program-related
inventions in automation, another way
to draft claims is to construct a solution
realising a measurement or testing
process control through the execution of
a computer program. For example, a liquid
viscosity measuring method controlled
by computer programs is described in
Part II, Chapter 9 of the guidelines, with
a written claim such as: “A method of
measuring liquid viscosity using computer
programs characterised in that it includes
the following steps: determining suitable
rotating speed for sensor rotor through
pre-set parameter signal processing
program in terms of liquid type; starting
the sensor rotor and making it shear rotate
in the liquid at the said rotating speed
by the sensor rotor control program, and
converting liquid sticky resistance value
detected by the sensor rotor into circuit
signal; calculating the liquid viscosity
basing on the said circuit signal by sensor
rotor signal processing program, and
sending the calculated viscosity value
to the LCD for display, or sending it to
the production control centre through
communication ports.”
In conclusion, patenting computer
program-related inventions can follow the
process illustrated in Figure 4. It is often
As China pursues innovation-driven
development, IP issues are under growing
scrutiny. As a result, multinationals would
be well advised to protect their market
share through IP rights by following best
practice in China, which includes the
following:
• A solution in a claim must comprise a
technical feature, according to Article
25.1.2.
• If it applies natural laws to become a
technical solution, it must meet the
criteria set out in Article 2.2.
• The technical solution must be clear
and supported by description in order
to meet Article 26.4.
• The technical solution must be novel
and non-obvious compared to prior
art to become an allowable solution,
according to Article 22.
Action plan
Li Xiang is former IP counsel at Zhong Tian
An Tai Information Technology, Beijing
lixiang_email@126.com