The Intellectual Property Office (IPO) announced on 20 May 2008 the amended Patent Examination Guidelines for Computer Software Related Inventions (hereinafter referred to as "New Guidelines"), which became effective on the same day and applies to all the pending patent applications covering software inventions and patent applications to be filed for software inventions.  The New Guidelines are based on the relevant provisions of the Patent Law and its Enforcement Rules, as well as the chapters covering the general guidelines in the Patent Examination Guidelines; relevant examination guidelines adopted in the United States , Europe and Japan were considered and referenced in the formulation of the New Guidelines.  We have summarized the main content of the New Guidelines as below for your reference.

1.           Adding New Section of "Definition of Computer Software Related Inventions”

The section provides the definition of computer software-related inventions and stipulates that, in evaluation of whether a claimed invention meets such definition, it is the substantive contents rather than formality of expression that should be considered, so as to determine whether the claimed invention's contribution to the prior art as a whole has technicality.  The New Guidelines applies the general criteria, on the basis of the definition of the statutory invention, to examine whether an invention is statutory and whether its claims have patentability.

2.           Rearranging Section of "Non-Statutory Invention Types"

In the New Guidelines, the non-statutory invention types are exemplified in five categories: "natural laws per se," "mere discovery," "inventions against natural laws," "inventions not utilizing natural rules," and "non-technical concepts," in which the non-technical concepts comprise "mere information disclosure" and "mere computer processing."  If an invention is a signal or a computer program in a programming language, it will also be considered mere information disclosure which is of non-technical concept.  

3.           Specifying "Business Method Invention per se" as "Not Utilizing Natural Rules"

Business methods are artificial rules such as social rules, empirical rules, or economical rules, so the business method per se does not meet the definition of statutory invention type. 

4.           Specifying New Allowable Invention Types as "Computer Program Product," "Data Structure Product" and the Like

A claim of computer software-related invention normally may be an article claim or a process claim.  Owing to popularity of computer networks, computer software can not only be stored in a tangible storage medium, but also be transmitted and be accessed directly through insubstantial networks without having to be stored in a storage medium.  In this regard, it is necessary for the article claim to cover an invention which is defined as an article storing a computer-readable program(s) regardless of the type.  As a result, a computer program product claim, a data structure product claim and the like, in addition to the currently allowable ordinary claims such as a device, a system or a computer-readable storage medium, are allowable and examined on the basis of the substantive features in the claims.

5.           Adding New Section of “Means-plus-function Clauses and Process-plus-function Clauses”

The section specifies the occasions of using means-plus-function clauses, and evaluates whether a claim is expressed in means-plus-function clauses on the basis of criteria which basically follow the US practice.

6.           Expanding the Section about "Industrial Applicability," "Novelty," "Inventive Step" in Patentability Requirements

The section differentiates the requirements for industrial applicability from those for sufficient disclosure of the specification and invention implementation.  Further, the section specifies the criteria for determining whether a means-plus-function claim has novelty which basically follow the MPEP of the USPTO.

If you have any questions or comments on the New Guidelines, please feel free to contact us.