Software & Business Method Patent in Taiwan

Software&
Business Method
Patent in Taiwan

1. FinTech (Financial Technology) related application
tendency in Taiwan
2. Patent Act—Definition of Invention
3. Definition—Software/Business method Invention
4. Patent Eligibility—Software
5. Patent Eligibility—Business Method
6. Inventive Step—Software/Business Method
7. Case Study
Overview of Taiwan Aspect
2

1. The FinTech Related
Application Tendency in
Taiwan

• G06Q 20/00 : Payment architectures, schemes or protocols
• G06Q 30/00 : Commerce, e.g. shopping or e-commerce
• G06Q 40/00 : Finance; Insurance; Tax strategies; Processing of
corporate or income taxes
1. The FinTech Related Application
Tendency in Taiwan
4

File
d
Issued
1. The FinTech Related Application
Tendency in Taiwan
5

2. Patent Act – Definition of
Invention

Article 21 Definition of invention
"Invention" means the creation of technical ideas, utilizing the
laws of nature.
2. Patent Act – Definition of Invention
7

3. Definition—Software/Business
Method Invention

Software
• When the computer program is executed, if there is a technical
effect that exceeds the normal physical phenomenon between
the program and the computer, the overall solution to the problem is
technical.
• For invention using an algorithm to implement a method. If the steps
of executing the computer software are described in the scope of a
claim, and the implementation of its algorithm, as a whole, involves
"technical means in the technical field," the inventions complies
the patent eligibility.
3. Definition—Software/Business Method
Invention
9

Business method
• The business method is the artificial rule of social law, rule of thumb
or economic law.
• For example, a commercial competition strategy, business
management method, and financial insurance commodity
trading method.
• Business methods cover a wide range of areas, including
administration, finance, teaching, medical care, services, etc., not
only a simple business model.
3. Definition—Software/Business Method
Invention
1
0

Software
Business
Method
patentabl
e
Business method using
computer software and
patentable
Computer software using
law of nature showing
technical characters
1
1

4. Patent Eligibility—
Software

Unpatentable subject matters
a. Utilization Without Law of Nature
b. Without Technical Characters- Mere presentations of information
c. Without Technical Characters- Simply use computers
1
3

The patented invention is a program language, because it
is an artificial arrangement of commands, and does not use
the law of nature, and does not conform to the definition of
the invention.
1
4

Graphical User Interface:
Unpatentable: An invention merely presents information is not a
creation of technical ideas. It does not conform to the definition of
utility invention.
Patentable: However, the GUI interacts with an algorithm to produce
technical effects, such as
1) improving the accuracy of the input device or
2) reducing the cognitive burden when the user operates the
computer, making it technically a more efficient human-machine
interface.
Meet the definition of the invention using technical ideas.
1
5

Data format:
Unpatentable:
A data format itself is only a static memory configuration, not a
technical character.
Unpatentable:
If the computer system interacts with a data format, it only describes
the steps involved in how to collect the data; or even if the data may
contain a special format, it is still a mere information presentation.
Patentable:
The data format (or data structure) interacts with the computer
software or hardware to produce technical effects: enhance data
processing, storage performance, security, etc.
1
6

If the application of using computer software ( or network, processor,
storage unit, input and output device) , compared with manual works, is
only the high speed processing, high accuracy, or better processing
capacity, it is difficult to say that it has technical ideas.
However, it is patentable if the invention as a whole is technical.
A. overcome technical difficulties,
B. solve problems by means of technical means,
C. generate technical-related effects on the overall system,
D. such as enhancing information system security,
E. improving the efficiency of information system implementation,
F. strengthening Image recognition accuracy or
G. enhanced system stability
1
7

> To judge whether the computer is just simply used:
• Whether the computer software or hardware is an essential
element of solving the problem.
• However, if a method step is originally required to be performed by
human mental activity, in the invention, the human mental activity is
replaced by a special algorithm, and the algorithm can make the
overall invention technical.
• >> Question: AI algorithm itself?
1
8

5. Patent Eligibility—
Business Method

Unpatentable subject matters
b. Without Technical Characters- Simply use computers
2
0

Unpatentable:
If it is simply a business method itself, it is not patentable.
Patentable:
However, An implementation of computer technology to practice a
business method is patentable. The technical means is not the business
method itself, but a specific implementation method of using computer
hardware resources (computer, server, network, etc.) to achieve a
business purpose or function.
In other words, the method of realizing business using computer
software related technology cannot be unpatentable only because it is
applied on business.
2
1

b. Without Technical Characters- Simply use computers
If the application of using computer software ( or network, processor,
storage unit, input and output device) , compared with manual works, is
only the high speed processing, high accuracy, or better processing
capacity, it is difficult to say that it has technical ideas.
However, it is patentable if the invention as a whole is technical.
a. overcome technical difficulties,
b. solve problems by means of technical means,
c. generate technical-related effects on the overall system,
d. such as enhancing information system security,
e. improving the efficiency of information system implementation,
f. strengthening Image recognition accuracy or
g. enhanced system stability
2
2

(SAME AS SOFTWARE)
• To judge whether the computer is just simply used:
• Whether the computer software or hardware is an essential
element of solving the problem.
• However, if a method step is originally required to be performed by
human mental activity, in the invention, the human mental activity
is replaced by a special algorithm, and the algorithm can make
the overall invention technical.
2
3

6. Inventive Step—
Software/Business Method

Inventive Step
Article 22 Substantial Conditions
Section 2 Inventive Step:
An invention that is without the circumstances prescribed in the
subparagraphs of the preceding paragraph but can be easily made by a
person ordinarily skilled in the art based on prior art shall not be
patented.
2
5

In order to overcome the inventive step,
Taiwan takes secondary considerations:
• A. Teaching away
• B. Better results
• C. Unexpected results
• D. Commercial success
• E. Long-felt need and failure by others
• F. Overcome technical bias
2
6

Ways for software/business method to overcome inventive step
To overcome the inventive step requirements, a software or business
method related patent may be categorized as following:
6.1. Transferring from other technical field
6.2 . Replacing or adding well-known features
6.3. Systemizing artificial methods
6.4. Transferring hardware technology to software bases technology
6.5. Judgement of non-technical features
2
7

6.5. Judgement of non-technical features
Example:
A: An Image processing apparatus
B: An algorithm processing the image
C: Generate and sending a coupon to customers
2
8

Features in claim
A+B+C
Are the features
technical?
It is a limitation to the
claim or is helpful to
technical features. It
should be examined by
inventive step.
Do the features cooperating
with other technical features
enhance the performance?
Deemed to be an well-known
feature, which can be combined with
other prior art obviously. No
examination by inventive step.
No. (C is not.)
No. (BC is not.)
Yes. (B is.)
Yes. (A is)
2
9

1. The information management method of a multimedia remote control
provides an information management platform and proceeds the
following steps:
establishing a channel comparison table, which includes channel
numbers of cable channels…;
receiving and updating channel program information, which receives
the programs of each cable TV channel …;
generating a channel information, including a list of system operators
and a list of channel categories... ;
accepting download request, …. transmits to the multimedia
remote control.
Software Case: Information Management
Method of Multimedia Remote Control
3
1
Patent No. I415456

Processer
Information
management platform
Content
provider
multimedia remote control
3
2
Content
provider
Internet
Patent No. I415456

Decision of Invalidation procedure:
The result of the multimedia remote controller can download the
channel information and be directly used by a user, which does not
need a user manually categorize the channels, performs the technical.
The invention, a software and hardware collaborative operation,
realize the information processing steps by utilizing the information
processing system and a computer software.
The computer software implementation with technical effect, which is
not a simple use of the computer to process, conforms the definition
of the invention.
3
3
Conform the Invention
Definition
Patent No. I415456

An online trading method used to trade goods between merchants and users through a logistics
company, characterized by the following steps:
(1) the user purchases the merchant's goods through the intermediate platform and transmits to
the intermediate platform a transaction request that includes at least the user's choice of the
cash-to-payment transaction mode;
(2) the intermediate platform transmits transaction information...;
(3) the intermediate platform to the merchant selected or the intermediate platform designated
by the contracted logistics company's logistics platform to transmit the contract notification
request;
(4) when receiving the logistics platform transmission of the "contract success" of the contract
results of the message, the intermediate platform will be shipped by the merchant transaction
status to the payment platform;
(5) when receiving a user confirmation message from the "contract success " transmitted by the
logistics platform, the intermediate platform transmits the transaction status of the buyer's
confirmed receipt to the payment platform;
(6) payment platform and merchants to carry out real-time or regular cost transaction
settlement; (7) Payment platform and logistics platform to complete the liquidation and transfer
operation in real time or on a regular basis.
Business Method Case (1): Online Trading
Methods
3
4
Conform the Invention
Definition
Appl. No.098115855
Rejected by Inventive Step

1. A method of bargain auction comprises an auction system, including at least
a computer hardware and at least a program, completed by the following steps:
the auction system setting out the conditions such as "auction system store,"
"starting price," "each tender," and "limit times of tender" or "tender term" of a
good of an auction;
the auction system providing a buyer the good and asking the buyer for a
bid, the bid is deducted of an amount by the auction system;
after the auction system accepting the bid, comparing whether the buyer has
enough points and generating a comparison result;
if the comparison result is "yes", the auction system asks the buyer to enter the
bid amount, the points is deducted and the bid amount is recorded by the
auction system;
the auction system determining whether the auction is ended, and if it is
"no", the auction system continues to be open for the buyer to place the bid, and
if it is "yes", the auction system will be closed;
…..
Business Method Case (2): A Method of
Bargain Auction
3
5
Patent No. I305629

If the purposes of the method is to replace the manual work, the method
that originally belongs to human beings is simply implemented by a
computer, and it is not technical.
Taiwan IP Court of Appeal consulted the Machine-or-Transformation
test from the United States precedent.
“[MOT test] it is still one of the criteria for judging whether the
commercial method conforms to the patent eligibility, that is, whether it
is a technical idea created using the natural law.”
“[I]t is only related to the rules of the business method, and is not related
to specific technologies such as computer hardware and program
software, and is not combined with a specific machine or device, or
transfer a specific object into a different state or thing.”
民國102年度民專上字第25號判決
YANG,JI-CHENG v. Chinesegamer Int’l Corp., IP Court of Appeal, Oct.
31, 2013, Minguo 101 No. 25 Patent Civil Judgement.
3
6
Business Method Case (2): A Method of
Bargain Auction
Patent No. I305629
Rejected by Invention
Definition

• The attitude toward invention definition is not difficult to overcome.
• The percentage of FinTech applications being rejected is relative low.
• Among all rejection reasons, only 10% of applications are rejected by
subject matter issue.
• The United States precedents may be consulted by IP Courts in Taiwan, but
is unusual.
• Courts may dismiss the subject matter issue, and rely on concept of inventive
step to invalidate patents.
• Not many precedents are related to subject matter issue.
• In Examination Guideline, the concept of avoiding patentee pre-empt the
laws of nature, abstract ideas, natural phenomena are not mentioned at all,
instead, focuses on “utilization of natural law” and “technical ideas.”
Conclusion & Takeaway
3
7

Software & Business Method Patent in Taiwan

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