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Patent Eligibility of AI Technology Inventions in Taiwan and Analysis of Filing Strategies
George J. H. Huang
With the continuous development of artificial intelligence (AI) technology, the number of AI-related invention patent applications is increasing rapidly. However, given that AI-related technology is easily to be deemed as an “abstract idea” and lack of technical character, how to write patent eligible AI-related patent applications has become an important issue. Although the Taiwan Intellectual Property Office (TIPO) has not provided examination guidelines on AI-related patent applications, the TIPO recently published a determination procedure of whether an AI-related patent application has technical ideas. This article aims at discussing the patent eligibility of AI-related patent applications, trends in patenting AI inventions and analysis of strategies in Taiwan, and briefly comparing the Taiwanese system with regulations in China and Japan.
1. Problems of subject matter eligibility of AI-related patent applications usually face in Taiwan
According to Article 21 of the Taiwan Patent Act, “‘Invention’ means the creation of technical ideas, utilizing the laws of nature.” To meet this requirement, a computer software-related invention should first “utilize the laws of nature” and then “have technical ideas”. If a claim is directed to an abstract idea, the claim is not patent eligible since it does not utilize the laws of nature. However, given that the main technical features of the AI-related inventions are usually based on computational models and algorithms, they are easy to fall within the realm of “abstract ideas”.
The TIPO has not published examination guidelines specifically focused on AI-related patent applications and therefore, the patent examiners adopt “the Examination Guidelines for Computer-related Inventions”[i] when determining the patentability of AI-related inventions. Such guidelines require the claims relating to AI cannot solely be an abstract idea, and a simple addition of computer software or hardware to an abstract idea would not make the AI invention patent eligible. “Mixed-type claims”, which comprise technical elements and abstract ideas (non-technical elements), are thus largely adopted by applicants in Taiwan. A “technical element” is defined as the additional element excluding abstract ideas, including servers, processors, memories, etc. When a claim pertains to a mixed-type invention, judgement on the patent eligibility mainly lies on whether the claim has technical ideas.
The determination on whether a mixed-type claim has technical idea is based on the regulations stipulated in Chapter 12, Part 2 of the Taiwan Patent Examination Guidelines, “Where there is further technical effect going beyond the normal physical interactions between the program and the computer in the execution of a program, the technical means as a whole has technical character.”[ii] Similar to the EPO, the TIPO’s judgement on the eligibility of a computer software-related patent application focuses on whether the invention produces a technical effect on the whole system, such as enhancing the security of an information system or enhancing the executing efficiency of an information system. If an invention produces a technical effect, the invention is patent eligible.
2. The determination procedure of whether an AI-related invention has technical ideas
The TIPO published the below determination procedure of whether an AI-related patent application has technical ideas in December 2019[i]:
The main criteria for determination on the patent eligibility of a mixed-type claim is (1) whether the recited technical element is irreplaceable; (2) and whether the technical element cooperates with other technical elements or whether the technical element produces certain technical application or technical effect on the whole invention.
3. Analysis of current AI-related patent filing trends in Taiwan
Among the AI-related patent applications in Taiwan, most of the unpatentable inventions are applications utilizing “predictive analytics” in the fields of “business” and “banking and finance”1. The TIPO considers simple mathematical methods and algorithms are abstract ideas, and business methods do not utilize the laws of nature. The TIPO further opines that a claim does not have technical ideas if the technical element is not irreplaceable and does not produce a technical effect on the whole invention, even if a concrete technical element is recited in the claim. That is also the reason why patent applications utilizing predictive analytics in the fields of business and banking and finance are easy to be deemed patent ineligible.
4. Possible considerable changes to the examination guidelines for computer-related inventions in Taiwan
Currently, the determination on the patent eligibility of computer-related inventions focuses on whether the invention can produce a technical effect on the whole system; however, the determination criteria might be revised in the future. A direction of revision was recently published by the TIPO, discussing the possibility of not including the “technical effect” in determining the eligibility of computer-related inventions. A much clearer examination procedure might be published in the future as well.
5. Comparison of laws and regulations in Taiwan, Japan and China
China
The China National Intellectual Property Administration (CNIPA)[i] issued the latest amendment to the Patent Examination Guidelines in 2019. The amended guidelines were implemented on 1 February 2020 and the examination rules of eligibility of AI-related patent applications were clarified. Below are some important points:
- ˙Emphasizing the technical features of the invention should not be separated from the features regarding algorithms, business rules and methods, etc., during the examination.
- ˙Claims including technical features in addition to features regarding algorithms, business rules and methods should not be excluded in accordance with Article 25 of the Patent Law.
- ˙Clarifying the examination criteria regarding the patentable subject matter stipulated in Article 2 of the Patent Law.
- ˙Considering the technical contribution to inventiveness from the features regarding algorithms or business rules and methods, in which such algorithmic or business rules and method features functionally support the technical features and have an interaction relationship with the technical features.
Japan
On the other hand, the Japan Patent Office (JPO) states that if the examiner cannot determine whether the claimed software-related invention falls under the "creation of a technical idea utilizing the laws of nature", the examiner shall examine such invention from “the idea based on the standpoint of software” set forth in the examination guidelines[i],[ii]. In other words, if "information processing by the software is concretely realized by using hardware resources", the software belongs to a “creation of a technical idea utilizing the laws of nature”. Below are key points of the revised examination criteria:
- ˙When determining whether "information processing by the software is concretely realized by using hardware resources," the determination should be based on looking at the claimed invention as a whole. In particular, "concrete means or procedures" may be implemented as a whole not only by specific means or procedures stated in the claims but also multiple means or procedures.
- ˙The claimed invention is not patent eligible if the claims only state hardware resources and do not specify the claimed invention implements specific calculation or processing of information depending on the intended use by concrete means or procedures on which software and hardware resources cooperate.
- ˙The determination of patent eligibility of a software invention related to a business method is not made from the standpoint of whether the invention possesses a characteristic of the business method, but rather based on whether the information processing by the claimed computer software can be concretely utilized and realized using hardware resources.
When assessing patent eligibility, the TIPO emphasizes whether the AI-related invention produces a “technical effect” on the whole system. Comparatively, the CNIPA focuses on whether a claim includes technical features apart from simple calculation and business methods, considering all features recited in the claim as a whole, and whether the features of algorithms or business rules and methods are utilized to solve certain technical problems in a concrete technical field. In contrast, the JPO also examines the claim as a whole, but a cooperation between software and hardware resources on the implementation of invention is more considered. Applicants are recommended to take note of the slight differences in determination standards in each Asian country.
We compare the main different requirements of eligibility stipulated in other offices:
6. Analysis of filing strategies in Taiwan
In summary, when drafting the specification of invention patent applications with AI technologies as the main technical feature, practitioners are advised to emphasize on the close connection between the technical element, technical field and technical effect. The inventors and patent attorneys shall also include full and complete description of the AI technology and technical element in the specification. Especially regarding the applications in the fields of business or banking and finance, practitioners should bear in mind that the invention would be easily deemed as lack of technical character if the whole invention simply utilizes the algorithms or AI model to analyze or process the business data without solving a concrete technical problem. Also, enterprises should be keenly aware of the evolution of patentability of AI-related patent examination criteria that the TIPO might introduce in the future.
[1] Chapter 12, Part 2 of the Taiwan Patent Examination Guidelines: Computer-related Inventions. (2014). Taiwan Patent Examination Guidelines. Taiwan Intellectual Property Office.
[2] Page 2-12-1, Chapter 12, Part 2 of the Taiwan Patent Examination Guidelines: Computer-related Inventions. (2014). Taiwan Patent Examination Guidelines. Taiwan Intellectual Property Office.
[3] Li, C.-C. (2019). 我國人工智慧相關專利申請概況 及申請人常見核駁理由分析 (Practical development of Examination and Response Strategies of Taiwan AI-related patent applications). The Taiwan Intellectual Property Office.
[4] Chapter 9, Part 2: Some Provisions on Examination of Invention Applications Relating to Computer Programs. (2019). Guidelines for Patent Examination. China National Intellectual Property Administration.
[5] Annex B, Chapter 1: Computer Software-Related Inventions. (2015). Examination Handbook for Patent and Utility Model in Japan. Japan Patent Office.
[6] Examination Standards Office, Administrative Affairs Division. (2018). Points of Revision of the Examination Guidelines and Examination Handbook for Computer Software-Related Inventions. Japan Patent Office.
George is the Director of Wisdom International Patent & Law Office. He is the first lawyer having a solid technical background (biotechnology) to be qualified as a patent attorney in Taiwan. Having over 27 years' experiences in the intellectual property field, George is skilled in handling patent, trademark and design matters, including prosecution, infringement, litigations, cancellations and oppositions.
George is fluent in English and Japanese and he demonstrates his strengths by assisting notable overseas and Japanese corporate clients from diverse industries to obtain worldwide IP protections, including pharmaceutical, mechanical, chemical, cosmetics, manufacturing, retail, luxury goods, financial service and software industries.
George actively participates in professional associations and is a member of AIPLA, Councillor & Supervisor of Asian Patent Attorneys Association (APAA) Taiwan Group, Enforcement Committee of International Trademark Association (INTA), Trademarks Committee of APAA, and International Federation of Intellectual Property Attorneys (FICPI).