Prior to 2006, inventions that were implemented solely by computer program were very often rejected for being rules and methods of mental activities (non-patentable subject matter under Article 25.1 of the PRC Patent Law), or for lacking a technical contribution.
According to the Chinese Patent Office (CPO) Patent Examination Guidelines (CPO Guidelines), the following 3-step test can be used to determine if a particular CII constitutes patentable subject matter:
- whether the use of computer software in the solution provided solves a technical problem;
- whether the computer software’s controlling or processing of external or internal matters reflects use of a technical means; and
- whether the result obtained is a technical effect following the rules of nature.
To be eligible, a CII needs to satisfy all three criteria. Examples of patentable CIIs provided in the CPO Guidelines include computer software that:
- controls an industrial process, takes a measurement or tests a process control;
- processes external technical data; or
- improves internal performance of a computer system.
To accommodate ever faster development in information technology and increasing demand for protecting CIIs, there have been several changes to the CPO Guidelines relating to CIIs.
An early amendment in 1993 allowed claims for a device in addition to the previously allowed method claim for a CII. In 2006, the CPO Guidelines were again revised to permit device claims written in the form of “functional modules.”
Further modification in 2017 clarified that a device claim may recite both hardware and software instructions executed by the hardware. It also implicitly allowed computer-readable medium claims.
In 2020, a new section on the examination of patent applications involving algorithm features or business methods was added to the CPO Guidelines.
While the rules on the patentability of CIIs continue to develop in China, in the direction of affording better protection for CIIs, the drafting of valid patent claims for CIIs nevertheless remains a highly specialised field requiring considerable skill and expertise. Furthermore, the enforcement in China of CII patent claims is almost always fraught with difficulties. Therefore, clients seeking protection for their CIIs in China are strongly advised to take early professional advice on patenting and enforcement strategies.