In the United States, attorneys, judges and others have struggled for decades to determine when, if ever, computer programs or software should be eligible for patent protection. In the 1960’s the U.S. Patent Office declared that software could not be patented. Since then, a series of court decisions have rejected that view and established that one may definitely patent software in the U.S., although the exact requirements remain unclear and critics increasingly demand that it should not be patentable.
As a starting point, 35 U.S.C. §101 provides that any new and useful process, machine, manufacture, or composition of matter, or new and useful improvement thereof, is eligible for patent protection, subject to other requirements of the Patent Act (that is, §101 is just the threshold test for patentability). Congress has never stated any limitations to the patentable categories of §101 and case law has only recognized three categories of exceptions – subject matter that may not be patented: laws of nature, physical phenomena and abstract ideas. Computer software is often found to be ineligible on the ground that it comprises abstract ideas, but courts have struggled to provide a precise formula or definition for abstract ideas.
In In re Bilski (Fed. Cir. 2008), the Federal Circuit devised its machine-or-transformation test, stating that software might be patentable if it is tied to a particular machine or apparatus, or transforms an article into a different state or thing, but the Supreme Court rejected that as an exclusive test and Judge Rader has described that test as better suited for the Industrial Age than the Information Age. There were hopes the Federal Circuit might announce a workable test in CL Bank v. Alice Corp (Fed. Cir. 2013), but it failed to do so. Judge Rader then explained in Utramercial v. Hulu (Fed. Cir. 2013) that the relevant inquiry is whether a claim, as a whole, “includes meaningful limitations restricting it to an application, rather than merely an abstract idea [and]. . . This analysis is not easy, but potentially wrought with the risk of subjectivity and hindsight evaluations.”
In short, the test for patentability of software in the U.S. is little better than Supreme Court Justice Stewart’s famous quip regarding pornography: it’s hard to define but “I know it when I see it.” Likewise in Asia, most professionals who deal with patents know that some software should be patentable but have difficulty defining precise when.
In China, rules and methods for mental activities are not patentable, so a claim that describes an algorithm, mathematical rules, or computer program “as such” may not be patented. However, software that (a) uses a technical solution to (b) solve a technical problem concerning (c) a law of nature may comprise patent eligible subject matter. Of course, once subject matter passes that three-part test, it still must satisfy the basic requirements for patentability – novelty, non-obviousness and usefulness – the same as in the U.S.
If a claim in China recites both rules for mental activities and technical features, the examination guidelines state that the claim may be patentable, but the guidelines fail to define technical solutions and problems and it is unclear whether the technical aspects, on their own, are required to satisfy the novel, non-obvious and useful requirements. For example, in the U.S., the prohibition against patenting abstract ideas cannot be circumvented by appending trivial technical activity. It is unclear whether the same is true in China with respect to technical aspects and, if so, how one determines whether the technical aspects are sufficient.
As in the U.S., when drafting claims in China, one must describe the invention sufficiently to enable a person skilled in the art to make and use the claimed invention. For software patents, a flow chart and explanation should be included, along with drawings and description of associated hardware. Portions of the source code may be included for reference. Software claims may be drafted as either method or apparatus claims. However, Justin Shi, patent attorney at Sony Mobile Communications in Beijing, warns that apparatus claims may be deemed invalid if they are phrased only in means-plus-function language and fail to describe the apparatus or its embodiments.
In Taiwan, software is also patentable, provided the claims recite a technical solution that utilizes laws of nature. To qualify as technical, the solution must (a) use technical means to (b) resolve a technical problem, (c) achieving a technical effect. So long as the claimed software is tied to a machine or apparatus, there should be no difficulty satisfying the technical means, so challenges usually relate to the technical problem and technical effect.
Taiwan’s examination guidelines explain that a claimed invention will likely fail for lack of novelty if it merely applies technical means used in one field to another field in a manner that should be obvious to one skilled in the art, makes an obvious replacement of one technical feature for another (e.g., substituting a mouse for a keyboard), substitutes implementation of certain functions by software instead of hardware, or makes other trivial changes to existing technology. As an example, a software claim that recites the use of hardware only to present information or to process information that otherwise could have been done manually will not be deemed sufficiently technical.
The guidelines state that laws of nature and physical phenomena are not patentable in Taiwan, along with inventions that: violate laws of nature (although they would also fail the usefulness test) or fail to utilize laws of nature (such as rules of a game or sport). While the guidelines state that business method claims are ineligible as man-made rules, not utilizing laws of nature, they provide that a business method realized through computer technology shall be eligible, although it’s not clear why the technical aspect should exempt it from the need to utilize laws of nature.
Taiwan’s guidelines further explain that claims for computer software may be drafted as either method or article claims and article claims may describe an apparatus, system, computer readable medium, computer program product, data structure product, or other articles.
Korea’s Patent Act defines a patentable invention as any highly-advanced creation of technical ideas utilizing laws of nature. The invention must be industrially applicable and capable of being commercialized. Non-patentable subject matter includes laws of nature and natural phenomena, inventions that violate laws of nature or natural phenomena, that fail to utilize laws of nature (although an exception is made for business method patents realized through technical means), and techniques that can be gained by personal skill (e.g., how to throw a fast ball).
Korea’s examination guidelines explain that a computer program alone is a mere list of orders, which is therefore un-patentable. However, where the claim recites a program that is recorded on a storage medium, sufficiently tied to particular hardware and the combination of software and hardware satisfies the inventive step, achieving a technical outcome, it will qualify as patentable subject matter.
The guidelines explain that an invention which merely presents information through technology that lacks novelty, such as an ordinary musical CD, computerized compilation of data, or digital image data, would not qualify as patentable, but software that enables a novel presentation of such information might qualify. As an example, in 2006 Microsoft lost a $75 million judgment in Korea for infringing certain patents for computerized translation of text from Korean to English, which Microsoft was found to have used in its local version of its Office software.
Japan’s Patent Act also defines a patentable invention as any highly-advanced creation of technical ideas utilizing laws of nature. Non-patentable subject matter includes laws of nature and natural phenomena, inventions that violate laws of nature or natural phenomena, that fail to utilize laws of nature, artistic works, and techniques that can be gained by personal skill.
Japan’s examination guidelines explain that any software that processes information by means of a computer is deemed to utilize laws of nature. However, the claimed invention may lack an inventive step if it merely increases the processing speed or volume of what could otherwise be accomplished manually, applies technical means used in one field to another field in an obvious manner, makes an obvious substitution of one technical feature for another, substitutes implementation of functions by software instead of hardware, or makes other trivial changes to existing technology. Software may be patented as a method or article, including storage medium, so long as the claim recites software and hardware working in concert.
In short, while it appears that China, Taiwan, Korea and Japan all prohibit the patenting of software, as such, they allow it when the claims recite the use of software working in concert with specific hardware, particularly when the invention resolves a technical problem and achieves a technical result. Business methods appear to be patentable in all of the countries, except China, provided the invention is realized through technical means. However, the laws are constantly changing, precise tests have not yet been developed, and in Taiwan and China, at least, court decisions carry little precedential weight, so – for now – perhaps Justice Stewart provided the best answer: It’s hard to define precisely what software is patentable in Asia, but I’ll know it when I see it.