Patent Subject Matter Eligibility in Software-Related Cases

1. As far as software patents in Taiwan are concerned, the criteria for patent subject matter eligibility of a claim directed to a simple use of a computer consist in whether the problem to be solved, the means by which to solve the problem, and the effect of the means are clearly stated in relation to the technical field to which the claim pertains. If the claim is so worded that a software-related function or result is mentioned without further details, patentability requirements concerning, for example, the definition of the claimed invention, the element(s) essential to implementing the invention, or the definiteness of the claim may not be satisfied. As stated in the Examination Guidelines for Computer-Software-Related Inventions, a claim may have patent subject matter eligibility issues if a technical means for data input (or collection) or for data output (or display) is described in the claim only by stating the purpose or result of information processing, without specifying the information processing means or steps involved after data input and before data output.

2. While the eligibility criteria of software patents in Taiwan are not as rigorous as those set forth in 35 U.S.C. 101, the concepts and logic involved are still similar. A claim that is directed to an abstract idea without specifically defined technical features or that only involves performing a human activity or existing method through a computer does not meet the criteria for patent subject matter eligibility.

3. The applicant of a software patent application should think out of the box of application, be sure of “the technical problem to be solved”, and then figure out the technical means for solving the problem; in other words, the application should be centered on technical considerations. Eligibility issues tend to arise if a claimed invention merely computerizes a human activity in order to achieve a commercial effect or reduce the manpower required.

I. Issue:Is the subject matter of claim 1 eligible?

II. Judgment No.:2020 Min-Zhuan-Su Zi No. 53

III. Patent application at issue:Financial Method and Financial System Executed by Computer-Readable Medium

IV. Case summary

1. Case history:

The patent application at issue, titled “Financial Method and Financial System Executed by Computer-Readable Medium”, was filed on June 30, 2016. The Intellectual Property Office issued a Reexamination Decision of Rejection on May 13, 2020, deeming the subject matter of the patent application at issue unpatentable. The plaintiff was dissatisfied with the Decision and lodged an appeal, which was subsequently rejected. Still dissatisfied, the plaintiff filed the administrative appeal in question, which was dismissed by the Intellectual Property and Commercial Court on May 20, 2021 as detailed in Judgment 2020 Xing-Zhuan-Su Zi No. 53.

2. Claim 1:

A financial method executed by a computer-readable medium, comprising the steps of: setting a first contract period and a second contract period, wherein the second contract period is immediately after the first contract period; receiving, from a consumer terminal during the first contract period, consumption information of a consumer using a consumption voucher to purchase a consumption object at a store, wherein the consumption information comprises information of the consumption voucher and an original price of the consumption object; and performing the following sub-steps as determined according to the information of the consumption voucher: determining, according to the consumption information, whether the consumption object has a first preferential price provided by the store, wherein the first preferential price of the consumption object may be applied upon the consumer’s request or acquired by the consumer from a market; (1) sending an instruction to instruct a financial institution to pay the store a second preferential price, if the consumption object does not have the first preferential price; (2) comparing the first preferential price with the second preferential price, sending an instruction to instruct the financial institution to pay the store a lower one of the first preferential price and the second preferential price, and sending an instruction to charge the consumer the original price, if the consumption object has the first preferential price; and sending an instruction during the second contract period to instruct the financial institution to pay the consumer the original price.

3. Court judgment and grounds therefor:

(1) While claim 1 of the patent application at issue includes such features as “sending an instruction”, such a means is not a special algorithm. The process flow and instructions stated in claim 1 merely involve notification, and the setting or execution of a payment flow, in relation to transactions where a financial product such as a credit card is used, i.e., in relation to commercial contract terms and business models involving request for payment, payment, or profit sharing, none of which entails a natural law. The method of claim 1 depends on people’s subjective opinions or human activities, uses a problem-solving means that works on laws other than natural laws, and lacks technicality in itself.

(2) When an existing human process flow is systematized, it is required that the specification sufficiently disclose the algorithm(s) used for the systematization, and that the claim(s) specifies/specify the necessary steps of the algorithm(s). If the claim(s) only mentions/mention a certain function or result, patentability requirements concerning the definition of the claimed invention(s), the element(s) essential to implementing the invention(s), the definiteness of the claim(s), or inventiveness may not be satisfied. In the patent application at issue, the “payment and payment receiving mechanisms for the two contract periods” and the “comparison of the preferential prices” essentially are not special algorithms that can add to the technicality of the invention. The two contract periods are set by a user of the method, and it is not disclosed whether the lengths of the contact periods are determined by a special computation logic. As to the comparison of the preferential prices, it is nothing more than a commercial law that can be carried out by a common data or numerical value comparison method. The patent application at issue, therefore, relates only to replacing human operations with computer-based operations and does not fit the definition of an invention as set forth in the Examination Guidelines.

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