8 Questions You Should Ask Before Patenting Your Software in China
Updated: May 4, 2020
In an era of information technology, software and hardware work in tandem to promote innovation and creation. Software proprietary protection is a significant part of successful business expansion into the Chinese market for foreign companies.
How can you prevent your software-related proprietary rights from being inadvertently leaked, intentionally misappropriated or misused in China by a third party? Software patentability may be one of your considerations.
Before we dive into the details, it is necessary to point out a privative viewpoint that software shouldn’t even be patentable at the outset as software patents in reality only impede innovation. We sort of understand the basis of this argument, but software patents are still commonly stipulated by laws in the majority of jurisdiction territories. With this article, we mainly aim to simply demystify the laws around software patent eligibility based on the current state in China and popularize basic knowledge for your reference. Remember, the protection of proprietary rights is highly dependent on your IP strategies, so being familiar with how it works in China can only help, right?
This blog gives you insights into Chinese patent categories, patent filing methods, software-related patent-eligible examples, the differentiations between software copyright and software patent, and the analysis of IP-friendly environment reform in China.
1. What significance does a patent have in China?
A patent mainly grants a legal right to patentees for their creations, including inventions, utility models, and designs. The Chinese patent system is based on its Patent Law, a set of Implementing Regulations and the Guidelines for Patent Examination (Guidelines). Patent is territorial, that is to say, the Patent Law only takes effect within its territory and patent protection is provided on a country-by-country basis.
China grants a patent on a first-to-file basis. Patent rights will be granted to the first applicant if two or more applicants apply for a patent for the same invention separately.
Once the patent is granted for an invention-creation, no unit or individual can exploit the patent without permission of the patentee. Therefore, making pre-emptive filing will be a cost-effective option before the launch of your products or services in China. Interestingly, the costs of filing protection for patents are much lower than the costs such processes incur in Europe and North America.
2. What does a software-related patent refer to?
Computer program patentability mainly refers to a software-related invention. “Invention” in the Patent Law means any new technical solution relating to a product, a process or improvement thereof. An invention patent in China is valid for 20 years from the filing date.
An invention application of computer programs is subject to patent protection only if it constitutes a technical solution. The 2017 revised version of the Guidelines has explicitly extended patent eligibility to software-related inventions, leading to not only corresponding more closely with the European guidelines but also making China more patent-friendly to software-related inventions than the U.S. If you want to learn more about patenting software, pay attention to the Guidelines.
3. By what means can an international applicant file a Chinese patent application?
You can file a patent application directly to the National Intellectual Property Administration of the P.R.C (CNIPA)with the assistance of a patent agency or through the Patent Cooperation Treaty (PCT) system, as China is a member of PCT.
Under PCT, you may file a single international patent application with the same effect as national applications filed in each Contracting State. According to PCT Yearly Review 2019, PCT is currently one of the most popular application methods. Computer technology and digital communication have continually made up the largest amount of PCT applications especially from Chinese companies. In conclusion, there is no doubt that PCT could be a weighty alternative for software patent applications.
4. What kind of documentation is life-and-death for filing your software patent?
There are two key documents you shall prepare well in advance: the drafting of description and the claim of invention application relating to computer programs.
The description should, in addition to outlining the technical solution of the invention as a whole, illustrate the concept of design and the technical features of the computer program concerned, as well as the mode of exploitation to produce the technical effect in a clear and complete manner. Thus, the principal flow chart of the computer program must be presented,and an explanation of every step of the computer program shall be elaborated.
The claim may be drafted as a process claim or product claim. No matter what kind of claim your invention application is drafted as, the claim should:
be supported by the description
represent the technical solution of the invention in its entirety
outline the essential technical features for resolving the technical problems
describe in summary the functions of the computer program, as well as the effects the functions can produce
If you want to have a better shot at a successful patentability, pay attention to your writing strategy. A veteran patent agency that prepares and goes through the whole procedure on behalf of you is crucial for the successful filing. Therefore, we strongly recommend you entrust and consult an experienced and professional Chinese patent agency.
5. What is the software-related “patent-eligible subject matter”?
The core software patent-eligible characteristic is that it contains a technical solution. A technical solution is an aggregation of technical means which apply the laws of nature, and thereby achieve a technical effect to solve a technical problem. In another word, the eligible subject matter must include a solved problem(s), a utilized technical mean(s), and an obtained effect(s) complying with the laws of nature.
The Guidelines give several software-related invention eligibility examples, such as the following:
Subject Matter 1: A method for controlling a die forming process of rubber. This solution solves the technical problem of over-vulcanization and under-vulcanization of rubber. This invention application, by utilizing technical means, is a solution performing industrial process control through the execution of computer programs.
Subject Matter 2: A method for enlarging the storage capacity of mobile computing devices. This solution is a method by which the internal operating performance of mobile computing devices is improved through the execution of computer programs. The technical means it utilizes is in conformity with the laws of nature and what is obtained is the technical effect.
Subject Matter 3: A method of removing image noise. This solution solves a technical problem on how to remove the image noise and reduce the image blur phenomena. It utilizes technical means in conformity with the laws of nature. In doing so, the effect of the removal of image noise and the decrease of image blur phenomena due to image noise removal can be obtained.
Subject Matter 4: A method of measuring liquid viscosity by using computer programs. This solution solves the technical problem on how to improve the speed and accuracy of liquid viscosity measurement. It utilizes the technical means in conformity with the laws of nature. What is obtained is the technical effect of the real-time measurement of liquid viscosity on site.
6. What is excluded from the software patentability subject matter?
No patent rights are granted for the rules and methods for mental activities, which is the biggest barrier for patent eligibility. If a claim merely relates to an algorithm, or mathematical computing rules, or computer programs per se, or computer programs recorded in mediums (such as tapes, discs, optical discs, magnetic optical discs, ROM, PROM, VCD, DVD, or other computer-readable mediums), or rules or methods for games, etc., it falls into the scope of the rules and methods for mental activities and does not constitute the patentable subject matter, for which patent protection may be sought.
Here are some software-related invention ineligibility examples listed by the Guidelines:
Subject matter 1: A method to solve the ratio of the circumference of a circle to its diameter using computer programs. This solution merely relates to a pure mathematical computing method or rule executed by computer programs, it belongs to rules and methods for mental activities.
Subject matter 2: A method of automatically computing the coefficient of kinetic friction based on customarily used physical parameters. The solution is not an improvement of the measurement method, but a numerical computing method executed by a computer program, and it belongs to rules and methods for mental activities.
Subject matter 3: A general transition method for global language characters. The solution is not an improvement of the machine translation, and it belongs to rules and methods for mental activities.
Subject matter 4: A computer game method featured with both grown-up type and question-and-answer type for users. The solution does not constitute a technical problem. What it utilizes is not technical means but to combine both question-and-answer type and grown-up type of games based on man-made activity rules. What is obtained is not a technical effect but merely the effect of management and control of combining processes of question-and-answer type game and grown-up type game.
7. Software copyright vs. software patent?
Copyright is bestowed upon the creation of a work and its protection happens automatically. Software copyright can be registered in the Copyright Protection Center of China. Computer programs, whether in source or object code, can be protected under Copyright. In comparison, a software patent is legally and technically more complex. It must be filed for, and the application shall comply with both formal and substantive requirements. Most importantly, the patented invention content must be disclosed to the public, which could cause counterfeiting risk by potential imitators.
Then why do so many people still seek to patent their software-related invention? One of the strongest reasons is that copyright protection extends only to the literal expression of computer programs and languages (e.g. Java, C++, Python), while patent focuses on protecting its inner ideas, procedures, methods of operation, which often have more considerable commercial values. However, it is always the owners’ responsibility to weigh the pros and cons between them and then make corresponding tactics.
8. What is the IP protection environment like in China?
As an IP powerhouse, China has vigorously made steady efforts to better protect and enforce IP rights, in order to build up a neutral, non-discriminatory and transparent IP protection environment for Chinese and international stakeholders.
Under this circumstance, the Intellectual Property of the Supreme People’s Court has started hearing patent-related civil or administrative cases and other IP appellate cases with technical issues since January 1, 2019. Also, a set of specialized IP courts have been established to streamline procedures and speed up IP cases’ adjudication process. As far as international IP cases are concerned, China has one of the shortest adjudication periods in the world. For instance, the average adjudication time of foreign-related IP cases handled by the Beijing Intellectual Property Court is now only four months.
Furthermore, there exists a variety of mechanisms to inexpensively and rapidly obtain enforceable rights in China. As foreign individuals or companies hold a high win rate of the IP infringement case in China, more companies are looking to China as a stand-alone enforcement jurisdiction, and “a preferred venue” for settling international IP disputes. For example, frenemies tech behemoths Qualcomm Inc. and Apple Inc. tried to adjudicate their disputes over patent infringements in Chinese IP courts.
In summary, protecting your valuable software innovations through patent applications in China should not be put on the back burner. If you have an ambitious plan for your company’s future in China, emphasizing on your IP holistic strategy protection, software-related invention patentability is worthy to be included as early as possible.
Hohot Consulting Oy provides Chinese IP and legal consultation to global clients. With a strong knowledge of both international and Chinese indigenous practices, we are looking forward to facilitating your business success in China. Learn more here.