DISCUSSION ON PATENTABILITY OF INVENTION APPLICATIONS RELATING TO COMPUTER PROGRAMS

　　Computer technology is increasingly and quickly developing, and computer software plays an important role therein. In many technical fields relating to computer technology, innovations are always realized absolutely by software implementations without any changes to hardware. Therefore, more and more Chinese and foreign corporations file invention applications with the Chinese Patent Office relating to computer programs. The essence of this kind of invention normally lies in computer programs, without any change or substantial change in hardware. Different from invention applications in other technical fields, as computer technology has a special characteristic, invention applications relating to computer programs were often regarded as having deficiencies in patentability and drafting, and thus were difficult to be granted with patent rights. This article discusses the patentability of invention applications relating to computer programs, with the following aspects, in conjunction with the newly amended Guidelines for Examination.

　　I. Rules and Methods for Mental Activities
　　Specific definitions of “mental activities” and “rules and methods for mental activities” are provided in Section 4.2, Chapter 1, Part 2 of the newly amended Guidelines for Examination, where “mental activities refer to human's thinking movements. They originate from human's thinking, and produce abstract results through inference, analysis and judgment, or, via human's thinking movement, produce results by indirectly acting on the nature. Rules and methods for mental activities are rules and methods governing people's thinking, expression, judgment and memorization.”
　　A definition of computer programs is provided in Chapter 9, Part 2 of the newly amended Guideline for Examination, where “computer programs per se said in this chapter mean a coded instruction sequence which can be executed by a device capable of information processing, e.g., a computer, so that certain results can be obtained, or a symbolized instruction sequence, or a symbolized statement sequence, which can be transformed automatically into a coded instruction sequence. Computer programs per se include source programs and object programs.”
　　According to the above definitions, the Writer takes the view that it is not appropriate to regard “computer programs” as rules and methods for mental activities. Firstly, it is explicitly indicated in the definition of computer programs as provided in the Guidelines for Examination that a computer program is a coded instruction sequence, a symbolized instruction sequence, or a symbolized statement sequence. Therefore, it shall be regarded as a result of human's mental activities, rather than behavior and process of mental activities. In fact, any invention is a result of human's mental activities, i.e., creative work. It is “Computer programming” that is behavior and process of human's mental activities. Further, computer program per se are not rules and methods governing people's thinking, expression, judgment and memorization, but are descriptions of processing objects and processing rules, executed by apparatuses having information processing capability such as a computer, for directing and controlling the operations of apparatuses having information processing capability such as a computer and peripheral apparatuses.
　　From view of the definition of rules and methods for mental activities, the Writer holds the opinion that in order to determine whether or not it belongs to rules and methods for mental activities, it shall be determined whether it governs people's thinking, expression, judgment and memorization. If so, it belongs to rules and methods for mental activities, otherwise not.
　　Therefore, it is inappropriate to deem all the computer programs per se as rules and methods, the judgment shall be made in accordance with Rule 2.1 of the Implementing Regulations of the Patent Law as well as Novelty, Inventiveness and Practical Applicability.

　　II. Rule 2.1 of the Implementing Regulations of the Patent Law
　　According to Rule 2.1 of the Implementing Regulations of the Patent Law, “invention” in the Patent Law means any new technical solution relating to a product, a process or improvement thereof. An invention application relating to computer program is the object of patent protection only if it constitutes a technical solution.
　　The Writer takes the view that this Rule is the basis to determine whether computer programs per se and inventions relating to computer programs have patentability.
　　An invention can be called object of patent protection only when it meets the following requirements simultaneously: solving technical problem(s), making use of technical means, and achieving technical effect(s).
　　For example, as for the first example in Chapter 9, Part 2 of the newly amended Guidelines for Examination, it is regarded as not belonging to the subject matters of patent protection because it does not conform to the provision of Article 25.1(2) of the Patent Law. However, the write takes the view that the rejection shall be based on Rule 2.1 of the Implementing Regulations of the Patent Law. This example refers to a method for solving the circumference ratio using computer programs. The problem to be solved is to solve the circumference ratio, which is a mathematical constant, and thus is not a technical problem. Means used for solving the problem is a computer program (a computer), which belongs to technical means. The effect is solving the circumference ratio, which is not a technical effect. Therefore, the three basic elements are not satisfied simultaneously, and thus no technical solution is constituted, not belonging to the subject matters of patent protection.
　　The EUROPEAN UNION, the patent system of which is relatively close to that of China, issued “Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on the patentability of computer-implemented inventions”, which indicates that “computer-implemented inventions” are any inventions created by making use of computers, computer networks or any other program processing apparatuses, or are any inventions that possess features such as absolute novelty and created entirely or partly by computer programs or computers. The definition of EU does not exclude any computer program from patentability. As long as it can be executed by a program processing apparatus and possess novelty, inventiveness and practical applicability, it can be granted a patent right. Taking the EU provisions and the practice in China into consideration, The Write takes the view that a computer program can be granted a patent right only if it has the “technical feature” and meets the criteria of novelty, inventiveness and practical applicability. It is suggestable that China uses the experiences of EU for reference, rather than excluding the computer programs per se from the subject matters of patent protection simply based on Article 25.1(2) of the Patent Law. To the contrary, determination shall be made according to technical feature, novelty, inventiveness, and practical applicability.

　　III. Drafting of invention applications relating to computer programs
　　According to the newly amended Guidelines for Examination, “the claims of an invention application relating to computer programs may be drafted as process claims or product claims, i.e., the apparatus for executing the process. No matter what kind of claims are drafted, the claims shall be supported by the description, which shall represent the technical solution of the invention in its entirety and describe the necessary technical features for resolving the technical problem, rather than describe synoptically the functions of the computer program and the effects those functions can produce.
　　If the claims are drafted as process claims, the various functions to be performed by the computer program and the way to perform the functions shall be described in detail according to the steps of the process. If the claims are drafted as apparatus claims, the various component parts and the connections among them shall be specified, and details shall be also given on how and which the component parts perform the various functions.
　　If apparatus claims are drafted totally based on computer program flow and completely coincide with each step in the said computer program flow, or completely coincide with the process claims reflecting said computer program flow, i.e., each component in the apparatus claims completely corresponds to each step in the said computer program flow or each step in the said process claims, then each component in the apparatus claims shall be regarded as function modules which are required to be built to realize each step in said computer program flow or each step in the said process claims. The apparatus claim defined by such a group of function modules shall be regarded as the function module architecture to realize said solution mainly through the computer program described in the specification rather than entity devices to realize the said solution mainly through hardware.
　　Namely, according to the above, for an invention application relating to a computer program, if there is no change in hardware structure, it shall be protected by process claims and virtual apparatus claims completely coinciding with the process. The Writer consider this provision is unfavorable to the protection of invention applications relating to computer programs. The Writer takes the view that it is not necessary to limit the product claims to the virtual apparatus completely coinciding with the process. Instead, the “apparatus” shall be explained according to the concrete contents disclosed by the Description and knowledge of those skilled in the art.
　　Computer science has been rapidly developed nowadays, many inventions are based on computer programs or software, and many technologies are implemented in the form of computer programs or software. For example, if we disassemble any cell phone, we can find that almost all the basic components are the same, while the core techniques may be different, and thus the functions may be different. Such different functions are implemented by computer programs and software. A number of steps or all of the steps in process claims are executed by the same entity device, such as a general purpose processor, a special purpose processor, or a DSP, etc. However, if the costs are neglectable, each “device” can be implemented by discrete elements, or each “device” may be implemented by a single chip, which shall be also regarded as falling into the scope of protection. However, as stipulated in the current Guidelines for Examination, such entity devices are not regarded as falling into the scope of protection.
　　According to the current examination criteria, for such a claim as “a product, comprising a processor, the processor configured for: step 1; step 2; and step 3”, the examiner always considers that the claim is not clear because the processor is limited by functional features rather than by structural features. However, actually, the feature of this kind of claims is identical to that of the virtual apparatus claims, both of them are limitations by function module architectures, with the only difference in the form of drafting. The Writer believes that this form of drafting is clearer, more concise, and is more capable of representing the essence of the invention. Moreover, this conforms to the provision “if it is drafted as an apparatus claim, the various component parts and the connections among them shall be specified, and a detailed account shall also be given on the component parts by which the various functions of the computer program are performed, and on how these functions are performed”. That is, the component part is the processor, and a detailed description is given on the component part by which various functions are performed and how these functions are performed.
　　The Writer considers that an invention application relating to computer program has its uniqueness. For an invention application relating to computer program, according to the drafting requirements of virtual apparatus as stipulated in the Guidelines for Examination, the “apparatus” limited in the product claims does not have physical structures, and thus it represents a function module architecture. This kind of functional limitation has been considered clear. On the other hand, an invention application relating to computer program does not claim to protect the apparatus per se only, but shall be entirely regarded as a combination of method steps or functions and the apparatus, i.e., a product comprising a computer program and hardware. For the above second drafting manner, one cannot evaluate the apparatus per se regardless of the method, but shall take all the technical features in the claims into consideration. The protection scope of a claim is limited by the technical solution formed by all the technical features of the claim, and whether or not the claim is clear shall be determined by those skilled in the art.
　　In the current examination criteria, no patent protection is granted for a computer storage medium limited by computer programs recorded therein (i.e., a carrier of the computer programs). However, for such a claim as “a computer storage medium having stored therein computer executable instructions which, when executed by a computer, causes the computer to: function 1 (step 1); function 2 (step 2); and function 3 (step 3)”, the Writer takes the view that it shall be granted patent protection, because this kind of claim does not solely claim to protect a computer storage medium per se limited by computer programs recorded therein. In overview, the protection scope involves the computer storage medium, the stored computer programs, and interactions between the computer and the computer storage medium, and the execution of the computer programs by the computer. Actually, the essence is also a method or function module limitation.

　　IV. Some issues to be considered:
　　1. What is “product”?
　　A definition of “product” is provided in the Section of the Guidelines for Examination relating to Utility Model that products shall be objects manufactured by industrial methods, having definite shape and structure, and occupying a certain space. As seen, the product shall be a hardware entity.
　　As for an invention application relating to computer program, software per se cannot be regarded as a product. However, the above said computer storage medium combining the software and the executions by the computer shall be regarded as a product that could be granted patent protection.

　　2. What is “structure”?
　　According to the Guidelines for Examination, the so-called “structure” refers to physical entity structure. However, due to the specificity of the invention application relating to computer programs, the “structure” shall include “physical entity structure” and “virtual logical structure”. The virtual logical structural shall not be excluded.

　　3. Definition of “technicality”
There is no explicit definition of “technicality” in the Guidelines for Examination, easily causing different criteria in determination of “technicality”.

(Writer: Bin CHEN, Shanghai Patent & Trademark Law Office)