Patent protection for computer program products

The *Patent Examination Guidelines* (2023) officially came into effect on January 20, 2024. The most notable revision in this revision is the explicit inclusion of computer program products as the subject matter of claims. Following the implementation of the new guidelines, many professionals in the computer and internet industries have focused on this topic. However, in discussions, the author has found several misconceptions. Therefore, this article aims to provide a brief analysis of patent protection issues for computer program products for professionals in the computer and internet industries.

PART 01 Background of the Revision

In my country, computer programs are not currently the subject of patent protection. The key concern regarding computer program patent protection is that, according to Article 25 of the *Patent Law*, rules and methods for intellectual activities are not granted patent rights, while many computer programs are essentially rules and methods for intellectual activities. In early patent examination practice, the examination of inventions and utility model patents involving computer programs and software was relatively cautious.

However, the era we have experienced and are currently experiencing is one of vigorous development in computer program-related innovation. According to foreign media reports, the ratio of output value generated by computer hardware and software in the United States has gradually changed from 8:2 in the last century to 9.5:0.5. Against this backdrop, inventions involving computer programs have gradually become the subject of patent protection. The 2017 revised Patent Examination Guidelines clarified that “inventions involving computer programs” are different from “computer programs themselves,” and that “inventions involving computer programs” can be granted patent rights. It also clarified that device claims involving computer programs can include not only hardware but also programs, allowing applicants to directly describe their improvements to software. “Computer-readable storage media” has become a subject that can be protected by claims.

In practice, “inventions involving computer programs” are often applied for as invention patents that include method claims. Based on the method claims, product claims are set up with the subject matter of “a **** system” or “a **** storage medium,” referencing the method claims. When potential infringers sell hardware systems or storage media such as CDs, USB drives, and hard drives that include the relevant methods, the patentee can solidify evidence through notarized purchases and pursue legal action through judicial or administrative means.

In recent years, internet technology has developed rapidly. The increasing dissemination of computer programs has abandoned traditional storage media such as CDs, USB drives, and hard drives, and instead spreads them directly as data on the Internet. This has, to some extent, made it inconvenient for patent holders to protect their rights. Therefore, the revised Patent Examination Guidelines of 2023 further clarified that “computer program products” have become a subject that can be protected as a claim. Looking at the protection of computer program-related patents in other countries, the United States and Europe can also protect computer program products [1], while Europe, Japan, and South Korea can directly protect computer programs.

The drafting method of a claim in the United States with computer program products as the subject is as follows: A computer program product includes a non-transient computer-readable storage medium containing computer-readable program code, wherein the computer-readable program code is executable to enable a computer to implement a method comprising: providing first and second interfaces to users associated with a tenant of a multi-tenant system; (translation) [2]. The European method of drafting claims concerning computer programs is as follows: A computer program includes: an application programming interface (API) (100) for testing implementation parameters of a computer program on one or more nodes in a distributed environment, the distributed environment including multiple kernels grouped into the one or more nodes; a timeout mechanism is executed to terminate the parallel testing of alternative implementation parameters of the API in the distributed environment on multiple kernels when one or more of the following termination conditions are met: the time allowed for parallel testing of an optional implementation with optional parameters has expired; and the process of completing testing of a predefined number of alternative implementations (translation) [3].

PART 02 Protection Principles and Drafting Methods in my country

Chapter 9 of Part II of the Patent Examination Guidelines specifically stipulates the examination of invention patent applications involving computer programs. The principle for examining invention patent applications involving computer programs is: if it only involves algorithms or mathematical calculation rules, the computer program itself, game rules and methods, etc., it belongs to “rules and methods of intellectual activities” and is not the subject matter of patent protection. If it contains both the content of rules and methods of intellectual activities and technical features, then as a whole it is not a rule and method of intellectual activities, and there is no issue of subject matter.

Invention and utility model patents protect technical solutions; therefore, invention patents involving computer programs must also constitute a technical solution. A technical solution typically requires clearly defining the technical problem solved, the technical means employed, and the technical effect achieved. For computer program-related patents, the achieved technical effect is particularly important, and special attention must be paid to its compliance with the laws of natural science.

Regarding specific drafting methods, the *Patent Examination Guidelines* stipulate that, in order to clearly and completely describe the main technical features of the computer program, the main flowchart of the computer program should be provided in the accompanying drawings. The specification should be based on the given computer program flowchart, describing each step of the computer program in natural language according to the chronological order of the flowchart. It is evident that for computer program-related patents, the key technical points of focus during examination are the program’s flow and steps. Regardless of whether the claims are written as product claims or method claims, the computer program’s related flow and steps are key points in drafting.

The *Patent Examination Guidelines* also provide drafting examples for claims with the subject matter of “computer program products.” In this patent application, claim 1 is drafted as a method claim, claim 2 is titled “a computer device/apparatus/system,” claim 3 is titled “a computer-readable storage medium,” and claim 4 is titled “a computer program product.” Claims 2-4 all reference claim 1.

PART 03 Advantages of Patent Protection

Besides patent protection, intellectual property protection related to computer programs mainly involves software copyright. According to the Copyright Law and the Regulations on the Protection of Computer Software, software works enjoy copyright protection. Software copyright typically refers to the intellectual property rights obtained by applying for software copyright registration after the work is completed, with the software copyright registration certificate serving as proof. It is important to note that the copyright of a software work is automatically enjoyed upon completion of the work; software copyright registration serves only as proof and publicity.

The advantages of software copyright protection lie in its low registration cost, short registration period, and lack of substantive examination. In contrast, the quality of patent drafting directly affects the stability of the rights, the possibility of authorization, and the operability of rights enforcement. For computer program-related inventions seeking protection, its importance is self-evident. Meanwhile, patent examination and authorization cycles are lengthy, especially for invention patents which undergo substantive examination, making authorization difficult.

However, to transform computer program-related inventions into exclusive property rights, patent protection is essential; software copyright protection cannot accomplish this independently. The main reason is that software copyright protects the expression of the work, not its ideas, methods, steps, and concepts. In other words, software copyright prevents others from pirating or copying your software. However, for innovative technical solutions that generate economic value, competitors often research the software. They may rewrite the program based on the target software’s code or design concept, employing circumvention methods such as changing the programming language. Software copyright cannot protect such rewritten programs.

In this situation, patents related to computer programs, especially those with claims specifically addressing computer program products, can provide effective protection. As long as potentially infringing software implements the methods and steps claimed in the patent claims, regardless of the programming tools used or the modifications made to the program code, it may be deemed infringing, leading to consequences such as ceasing infringement and compensating for losses. Therefore, patent protection related to computer programs has long been a trend and direction for the protection of intellectual property rights related to computer programs both domestically and internationally [4].

PART 04 Summary

The Patent Examination Guidelines (2023) clearly state that computer program products can be the subject of patent claims, which is an important step forward in the protection of intellectual property rights related to computer programs. However, this progress is not disruptive, but gradual. The past development has never stopped, and the road ahead is still long. In today’s rapidly developing computer technology and related fields such as the Internet and artificial intelligence, comprehensive protection of intellectual property rights related to computer programs and continuous optimization of the quality of intellectual property protection are of great practical significance for encouraging innovation, promoting scientific and technological progress and economic and social development, and building new productive forces.

References:

[1] Xu Chi and Qu Jing, On the Necessity of Claims for Computer Program Products from an International Comparative Perspective, Implementing the National Intellectual Property Strategy and Promoting the Development of the Patent Agency Industry – Proceedings of the 2010 Annual Meeting of the All-China Patent Agents Association and the First Intellectual Property Forum, 2010.

[2] US Patent Document, Publication No.: US9633101B2. [3] European Patent Document, Publication No.: EP2755138B1.

[4] Ren Zili, Wang Lihua, On the Patent Law Protection of Computer Software, Journal of Beijing University of Aeronautics and Astronautics (Social Sciences Edition), No. 3, 1999.