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Patenting Software in China

日期: 30 November 2018

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By Handong Ran

 

Similar to many other jurisdictions, China does not allow computer programs as such to be patented, but does not rule out patentability for inventions related to computer programs.[1]

 

A number of exceptions to patentability are set out by Article 25(2) of the Chinese Patent Law, one of which relates to rules and methods for performing mental activities. This is the exception that is often cited by Chinese Examiners to raise non-patentable subject matter objections against inventions related to computer programs. 

 

Claims essentially relating to one of the following, even if presented in the form of a solution to a problem, are normally regarded by Chinese Examiners as defining rules and methods for performing mental activities:

 

  • methods of calculation or rules of mathematical calculation;
  • computer programs per se[2]; and
  • rules and methods for playing games[3].

 

However, if a claim recites technical features apart from content relating to methods for performing mental activities, patentability cannot be ruled out for the claimed subject matter under Article 25(2) of the Chinese Patent Law.

 

Software patent applications may also be rejected under Article 2.2 of the Chinese Patent Law for lack of a technical solution[4]. A 3-step test is normally applied to decide whether an Article 2.2 objection should be raised:

 

  1. whether the claimed subject matter involves execution of computer programs in order to solve a technical problem;
  2. whether the computer programs are executed by a computer so as to control or process internal or external objects of the computer in accordance with the laws of nature;
  3. whether any technical effect is achieved in accordance with the laws of nature by execution of the computer programs.

 

If the claimed subject matter fails any one of the three steps, it will not be regarded as a technical solution in the sense of Article 2.2 of the Chinese Patent Law.

 

In order to obtain appropriate patent protection for software inventions, certain rules need to be respected when drafting applications for such inventions.

 

A claim drafted as a process for resolving a technical problem and reciting specific steps performed by way of executing computer programs to perform specific functions can normally meet the requirement of Article 2.2 and does not fall within the exception of Article 25(2).

 

A product claim normally needs to be drafted so that it spells out not only each specific component of an apparatus but also the connections between the components and describes how each function of the computer program is performed by a corresponding component or group of components. 

 

If it is not practicable to define the components by their physical structures, it is not necessary to do so. The components can then be defined in means-plus-function language. If means-plus-function language is used for a product claim, it is important to ensure strict one-to-one correspondence between recited means and steps recited in the corresponding method claim. Although the Guidelines allow means-plus-function language to be used for product claims, in practice it is not uncommon for Chinese Examiners to raise objections against means-plus-function claims on grounds of lack of support by the description.

 

The Chinese practice still does not allow certain types of claims. For example, claims to data structures are not patentable, but such claims can be amended to methods for generating the relevant data structures which are potentially allowable. Claims to computer programs as such are normally not allowable either but, following a recent revision to the Guidelines[5], claims to computer-readable medium storing such computer programs are now allowable provided that a technical effect can be achieved as a result of execution of the computer programs. Therefore, terms such as “data structure”, “signal”, “computer program product” etc. should not be used as definition of inventions in claims if fast grant is desired. However, for Chinese patent applications based on earlier foreign applications (e.g., Chinese national phase entry of PCT applications, or direct Chinese filing and claiming priority from earlier foreign applications), it is advisable to keep such claims at the time of entry/filing in the event that the Chinese practice changes later to allow such types of claims. Often, amendments or new claims (e.g., in divisional applications) based on originally filed claims are more likely to be accepted by Chinese Examiners than those made based on the description.

 

Description of Chinese patent applications also needs to be carefully crafted to support amendments to the claims. Chinese examiners are often reluctant to allow claim amendments unless there is almost verbatim support in the specification. This is particularly relevant if the patent applications originate from jurisdictions which adopt less strict policies on added matter issues than China.

 

Apart from describing the solution as a whole, the description needs to clearly and completely describe the design and technical features involved in the computer programs that are necessary to achieve the desired technical effects. It is advisable to include in the description technical problems that the prior art fails to solve and how the invention solves such problems specifically. Where appropriate, it is also advisable to include some description of the technical effects achieved by each technical feature or group of technical features. The Chinese Examiners tend to be more prepared to accept that the invention is technical if they see such description. Arguments for technical effect not based on the description, even if presented with supporting evidence, often are not accepted by the Chinese Examiners.

 

Normally at least a main flow chart needs to be included in the description of a software invention. Where specific functions or branches of a computer program involve multiple steps, it is advisable to also include flow charts corresponding to the specific functions or branches. The description needs to clearly and completely describe each and every step shown in the flow charts.  If particular steps are not essential, it is important that the description explicitly says so.  Otherwise, the Applicant may be forced to include corresponding steps and means in the independent claims.

 

Where the execution of computer programs involves changes to the hardware of a computer, a diagram showing the structure of the computer should be included, and the description should describe the relevant hardware components and connections there between in a way clear and sufficient for a skilled reader to implement the invention.

 

Please click here for a print-friendly summary of the above.

 

You can also find this article and others in our Patent Issues Newsletter Spring 2019.


The above is only a brief discussion of the particulars that one needs to be aware of if he wishes to patent his software invention in China. For more detailed information, please contact Handong Ran.

 


[1] Computer programs are defined in the Guidelines for Patent Examination of the Chinese Patent Office (Guidelines) as “coded instruction sequences executable by an information processing device, e.g., a computer, to obtain certain results”, or “symbolized instruction sequences or symbolized statement sequences that can be automatically transformed into coded instruction sequences”; a software invention is defined as “a solution to an identified problem,  which is wholly or partly based on processes of computer programs, for controlling or processing external or internal objects of a computer via execution of the computer programs by a computer”.

[2] There have been recent cases where claims to computer programs are also allowed, but this is yet to be consistently applied.

[3] Computer games that involve performance improvements for the computer running the games or technical changes to the structure or function of the computer running the games may potentially be patentable.

[4] A “technical solution” is defined in the Guidelines as “aggregation of technical means applying the laws of nature to solve a technical problem”. 

[5] Effective from 1 April 2017.

 

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