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IP Newsletter | Summer/Fall 2016
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PATENT
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Statutory Subject Matter for Computer Program Inventions in Korea
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Generally speaking, software inventions and business method inventions (often collectively referred to as "computer-implemented inventions") are treated similarly to other inventions under the Korean Patent Act ("KPA"). That is, the KPA does not have any provisions that specifically govern computer-related inventions, and applications for computer-implemented inventions are subject to the same statutory requirements of patentability that apply to patent applications in general (e.g., novelty, inventiveness and description requirements).
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Notwithstanding the absence of such provisions in the KPA, the most instructive resource for practitioners, litigators and applicants is within the "Examination Guidelines for Computer-Related Inventions" ("Guidelines") released on July 1, 2014, which are used as the prevailing standard for KIPO examiners in examining computer-implemented inventions. The Guidelines were initially released in November 1984 and have been revised several times, and most recently in July 2014. Among other things, the Guidelines set forth the requirements for allowable subject matter, claim drafting rules, and standards for inventiveness, which are generally based on case precedents.
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Unlike the U.S. (and many other jurisdictions), Korea explicitly provides a definition of what constitutes an "invention" in the KPA. Specifically, under Article 2 of the KPA, an invention is defined as a "highly advanced creation of technical ideas utilizing the law of nature." This definition of an invention applies equally to computer-implemented inventions.
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According to Section 2.2 of the Guidelines, such a creation of technical ideas is generally understood to mean a concrete means involving a combination of software and hardware (or device implementation) to achieve a specific purpose. That is, in the context of computer-implemented inventions, information processing realized through cooperation between software and hardware (i.e., in a way that information processing by software is concretely realized by utilizing hardware) is deemed to be a creation of technical ideas utilizing the laws of nature. This requirement essentially reflects a Supreme Court decision (Supreme Court Decision No. 2001-Hu-3149), which was rendered on May 16, 2003.
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Notably, while the U.S. landmark case Alice Corp. v. CLS Bank International significantly changed the statutory standard for software inventions, there have not been any other comparable decisions or any other relevant Korean Supreme Court decisions that further changed or clarified the statutory definition of invention as it applies to a computer program. Thus, the law in Korea remains relatively unchanged since 2003, and we have not seen any notable change in KIPO examination practice to make a shift towards adopting a more stringent review of computer-implemented inventions.
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Claim Categories for Computer-Implemented Inventions
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Under the current Guidelines, computer-implemented inventions can be claimed in one of the following forms:
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| a) |
Apparatus (device)
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| b) |
Process (method)
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| c) |
Computer-readable medium "CRM" (e.g., a floppy disk, a compact disc)
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| d) |
Computer program stored on a medium (added on July 1, 2014)
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The following are formats of the exemplary permissible claims as provided in the Guidelines.
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| Exemplary Formats for Computer-Readable Medium Claims |
| [Example 1] |
| A computer readable recording medium having recorded a program that causes a computer to execute Step A, Step B, Step C, etc. |
| [Example 2] |
| A computer readable recording medium having recorded a program for enabling (or making) a computer to serve as Means A, Means B, Means C, etc. |
| [Example 3] |
| A computer readable recording medium having recorded a program for implementing in a computer Function A, Function B, Function C, etc. |
| [Example 4] |
| A computer readable recording medium having recorded data having Structure A, Structure B, Structure C, etc. |
| Exemplary Formats for Computer Program Claims (added on July 1, 2014) |
| A computer program stored on a medium, for executing, in a computing device, Step A, Step B, Step C, etc. |
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Other than these claim forms, claims directed to a computer program per se (not stored on a CRM), a program signal or a series of program signals, a program product, and a program output are not allowed. Specifically, KIPO has been rejecting claims directed to a computer program per se on the grounds that the category of the claimed invention is unclear as to whether it is a method or a product. As indicated above, when the Guidelines were revised, the acceptable forms for claiming computer-implemented inventions were revised to allow computer program claims not recited as a CRM so long as it is claimed as being stored on a medium such that the program is used in combination with hardware (i.e., computer program stored on a medium). While "computer program stored on a medium" does not require the words "computer readable" before the term "medium," this is not an attempt to broaden the meaning of "medium" to include non-computer readable mediums. Rather, the practical application of this new claim format is that it is essentially treated the same as a CRM claim, and is generally perceived by practitioners as an attempt by KIPO to relax the formalities for claiming computer-implemented inventions. Applicants can now benefit from using this claim format, but there has not been any case precedent or further guidance from KIPO or the courts on how it differs from a CRM claim in terms of claim scope, if any, when assessing infringement.
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Meanwhile, KIPO examiners often reject claims directed to a specific element/component as being unclear when the Detailed Description suggests that the element/component may be implemented in "software." In particular, for claims directed to a "graphical user interface," "schema," "tool" and "engine" (which is described as being implemented in software in the Detailed Description), it is likely that KIPO examiners will reject such claims on the grounds that the subject matter is unclear. Thus, it is safer to draft claims to recite a "computer-readable recording medium," for example, as follows: "A computer-readable recording medium storing a computer program for implementing in a computer a user interface/schema/tool/engine . . ." or "A user interface/schema/tool/engine implemented by a computer program stored on a medium . . ."
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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