U.S.:
If USPTO considers a patent application is “a computer software related application”, then the patent application is firstly facing the issue of whether the patent application suits to an eligible subject matter as an invention, i.e., eligible patent application subject matter.
The eligible patent application subject matters regulated in U.S. patent act can be read including a method, a machine, a product and a material composition. Accordingly, a computer program is often considered as not belonging to statutory subject matters. Therefore, a computer program itself cannot be the patent application subject matter.
★The standard of eligible determination: In U.S. patent act, whether a computer software related application could be regarded as an invention eligibility is determined by Mayo test.
☆The specific processes of Mayo test are listed below:
(1) Part I, any patent application with claims citing the nature law (for example, the law of conservation of energy, the law of universal gravitation), the nature phenomenon (for example, the ice cube melt at room temperature) or the abstract ideas (for example, the mathematical formula, the computer encoding and decoding) are regarded as falling into the scope of Part I, and should enter to following Part II for further determination. Otherwise, if the patent application with claims not citing the nature law, the nature phenomenon or the abstract ideas, the patent application is directly considered to have the patent eligibility.
(2) Part II, if the claims of the patent application define the specific limitations such that the computer software related applications can meaningfully use the abstract ideas, the nature law or the nature phenomenon, the computer software related applications should have the invention eligibility and meet the basic standard to be granted as a patent. In other words, if the claims of the patent application are with elements or combinations having any one of the following characteristic features, the patent application could be granted.
(a) Increasing computer performance;
(b) Using specific machine, or using specific machine within the computer software related application; or
(c) Having improvements in other technical fields.
In contrast, a patent application with following characteristic features does not have the eligibility.
(A) Simply using a computer to execute an abstract idea instruction;
(B) Adding the well-known human activities as the technical characteristics into the claims;
(C) Applying the computer software to information collection.
※Tips for software related patent filing in U.S.:
1. Basically U.S. examiner principally regards a computer software as an abstract ideas. However, if claims of a computer software related application is with claims defining specific limitations to exceed the scope of an abstract ideas (or the nature phenomenon, the natural law), the patent application still have the patent eligibility.
2. In consideration of whether a computer software related applications has the eligibility, USPTO still considers whether the computer software related applications have characteristic features which significantly increase “the whole technical effects of the invention”. Therefore, if a computer software related applications could generate the technical effects exceeding normal phenomenon, the patent application still can be regarded having the eligible patent subject matter and be granted a patent.
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