Information technology has since the 1990s become a strong and useful tool applied in various industries. Industries that use information technology for complex calculations such as financial services, communications, and integrated circuit design have spared no effort in seeking protection for the new technologies thus developed. In response to this new trend, not a few countries have attempted to break through the hurdles that prevented "computer programs" and "new method of doing business" which arose from the application of information technology from protection, resulting in a drastic increase in the number of granted patents for inventions devised in business context.
The patentability of business method is revealed in a project report "Patent Layout Analysis and Recommendations for Taiwan's Financial Institutions" published by the Taiwan Intelligent Property Office (TIPO) on its official website on April 1, 2019. According to the report, although fintech has been developing rapidly internationally since 2012, a substantial increase in the number of fintech-related patent applications filed in Taiwan did not occur until 2016. The report also pointed out that a lot of fintech-related applications eventually matured into utility model, rather than invention patents. However, the value of the exclusive right, if derived from an invention patent, would actually be higher than that of a utility model due to financial technology’s attribute of being the combination of computer software-related technology and business methods. A more noteworthy point in the report is that the TIPO, through case studies, clearly set out the definition of "inventions" and the manner by which the "inventive step" and "enablement" of fintech-related applications are assessed. The following excerpt from the report could be treated as the TIPO's insight into the protection of business method inventions.
In Taiwan, any invention that is not statutorily unpatentable and that is a technical idea which utilizes the laws of nature and is susceptible of industrial application may be the subject matter of a patent. A business method is usually considered not to be an invention that uses the laws of nature, but rather it is kind of mathematical calculation, mental steps or artificial rules excluded from patent protection. Therefore, a business method would not become patentable simply because it involves the application and execution of computer software and hardware. In other words, if an application and execution of computer software and hardware generate only commercial benefits, such as improving the efficiency of execution with no technical effects being achieved, to obtain a patent therefor would become infeasible. On the other hand, , a patentable business method ought to be one that claims the process of operation of a computer program(s), or technical means provided to overcome/solve technical difficulties/problems encountered in the computer software industry and to achieve technical effect(s).
In the test of "inventive step", a business method itself is generally considered to be "non-technical" and hence consideration should be given to whether such non-technical feature could work in conjunction with other technical features to provide a non-obvious technical solution to a technical problem existing in the prior art. If this is the case, the feature of the business method itself may be recognized as part of technical means and determination shall be accorded to whether such feature gives a contribution to the "inventive step" of the invention over the prior art.
In the test of the "enablement" of a business method in possession of a technical content distinct from the existing technology, if the specification is drafted in an abstract manner without elaborating on how to specifically implement the technical application steps and functions, etc., it is likely that the invention will be considered not sufficiently disclosed to enable a skilled person to reproduce it. As such, with respect to business method applications involving blockchain and AI-related inventions, if the claimed inventions are not entirely based on existing technology, it is recommended that all the parameters be described in detail with the distinctions between the inventions and the relevant technologies set out clearly. It is also recommended that the applicant provide in the specification sufficient data that support the beneficial effect(s) of the claimed invention.
To date, the TIPO has prosecuted quite a number of patent applications for business method inventions and gained intrinsically valued experience in this respect. However, in order to adapt to the progressive development of the emerging technologies and the ever-changing technological innovation, the local patent system and practice ought to be constantly renovated and adjusted accordingly. It is hoped that the authorities continue to keep pace with the most current international practice and establish clear-cut guidelines for examining applications for business methods so that business method inventions can be protected without prejudice.