Like many other countries, in Vietnam, pure computer programs are not patentable but rather protected by the copyright law. However, certain computer programs are still eligible for patent protection.
The examination of computer programs is guided by Article 5.8.2.5 of the Vietnam Guidelines for Patent Examination. To supplement the provisions, on 31 December 2021 the Intellectual Property Office of Vietnam issued Annex I which contains additional guidelines.
As to an overview of this issue, please see our article at: https://investip.vn/vietnam-additional-patent-guidelines-for-inventions-relating-to-computer-programs/
Below are our English translations of Article 5.8.2.5 and Annex I mentioned above.
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Translation of Article 5.8.2.5
Article 5.8.2.5: Computer programs
An invention relating to computer programs is a form of “computer-implemented invention”, this expression is intended to cover claims which involve computers, computer networks or other programmable apparatus whereby prima facie one or more of the features of the claimed subject-matter are realized by means of a program or programs.
Although computer programs are excluded from patentability, if the claimed subject-matter has a technical character and is indeed a technical solution for solving a technical problem by a technical means to produce a technical effect, it can be patentable. For example, a data processing operation controlled by a computer program can, in theory, be equally implemented by means of special circuits, and the execution of a program always involves physical effects, e.g. electrical currents, such normal physical effects are not themselves sufficient to make the computer program have a technical character. However, if a computer program, when running on a computer, is capable of bringing about a further technical effect going beyond these normal physical effects, it is not excluded from patentability. This further technical effect may be known in the prior art. The said technical effect may be found e.g. in the control of an industrial process or in processing data that represents physical entities or in the internal functioning of the computer itself or its interfaces under the influence of the program and can, for example, affect the efficiency or security of a process, the management of computer resources or the rate of data transfer in a communication link. As a consequence, a computer program may be considered to be patentable if the program, when running on a computer, can bring about a further technical effect in addition to the normal interactions between the program and the computer.
However, even in the case of the said patentable computer program, in the claims, the subject-matters which their designations are presented by terms such as “computer program”, “computer software”, “computer program/software product”, ” program-carrying signal”, and the like are not acceptable. Computer programs can be protectable in the forms of subject-matters, for example, a method of operating a normal apparatus, an apparatus set up to perform a method, a readable medium storing a program to perform a method.
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Translation of Annex I
Annex I
GUIDELINES ON DETERMINATION OF SUBJECT-MATTERS PATENTABLE AS INVENTION RELATING TO COMPUTER PROGRAMS
(Attached to Decision No. 6193/QD-SHTT dated 31 December 2021 of the Intellectual Property Office of Vietnam)
1. Introduction
The assessment of whether a subject-matter claimed in a patent application relating to a computer program is protectable as an invention is stipulated in Article 5.8.2.5 of the Guidelines for Patent Examination issued together with Decision No. 487/QD-SHTT dated 31 March 2010 of the Director General of the Intellectual Property Office of Vietnam, amended and supplemented according to Decision No. 5196/QD-SHTT dated 31 December 2020. Accordingly, this subject-matter is patentable if a program (software) when running on a computer (hardware) produces a technical effect other than normal interactions between the program and the computer. Article 5.8.2.5 of the Guidelines for Patent Examination also gives some examples of further technical effects such as controlling an industrial process, processing data representing physical entities, or performing internal functions of a computer or its interfaces under the influence of the program.
Computer programs are being applied more and more widely in many areas of life to serve various needs and purposes including non-technical purposes. In practical examination, situations where the computer program-related subject-matter includes both technical (e.g. hardware-related) and non-technical (implemented by the software) features tend to increase. In many cases, it is not easy to determine whether such subject-matter has technical characters or to determine whether there is a technical effect other than the normal interactions between the program and the computer.
This Annex is intended to supplement guidelines for a better understanding of the provisions of Article 5.8.2.5 of the Guidelines for Patent Examination, in particular an explanation of a further technical effect, some of the common features that contribute to the technical character of the invention to produce a further technical effect and how to process in the examination procedure.
2. Assessment of technical character in the formality examination and substantive examination stage
When considering a subject-matter including technical features, e.g. hardware-related such as computers, computer networks, memory or data processing representing physical entities such as parameters, control values of an industrial process implemented by software, and non-technical features, e.g. related to sales, insurance, selection of candidates for a job, booking, managing or processing data of money value, business data, graphs, etc., to determine whether the interaction between the program and the computer produces a further technical effect, it is usually required to fully understand the invention, thereby analyzing the features in the claimed subject-matter. To do this, an examiner must carefully study the claims and related contents in the description and such amount of work can only be done during the substantive examination stage.
During the formality examination stage, a computer program-related claimed subject-matter if containing at least one technical feature, for example a hardware-related feature or data-processing feature representing the physical entities, may be temporarily accepted. An assessment of whether the subject-matter has actually a technical character and therefore can be protectable as an invention will be carried out during the substantive examination stage.
Therefore, an application will be validly accepted if its claims contain the following subject-matters, for example:
1. A method for a purpose implemented by a computer including steps: step A, step B, step C.
2. A processing device adapted to perform the method according to claim 1.
3. A computer-readable storage medium storing a program to execute the method according to claim 1.
However, if the claims contain the subject-matters which their designations are represented by terms such as “computer program”, “computer software”, “computer program/software product”, ” program-carrying signal” …, the examiner should issue an Office Action to disapprove such subject-matters according to the provisions of Article 5.8.2.5 of the Guidelines for Patent Examination.
Example 1:
A method of incentivizing customers to become loyal customers by offering discounts on future purchases.
It is assumed that in the description, the above-mentioned method is presented in the form of computer-implemented, however, the claimed subject-matter in this example does not contain any technical features and is only related to a mere business method, thus belonging to the form of excluded subject-matter according to Article 59.2 of the Law on Intellectual Property. The examiner should issue an Office Action to disapprove in the formality examination stage.
Example 2:
The method is implemented by a computer with a database to store customer data that has made a previous purchase to apply a discount on the next purchase.
The subject-matter relating to computer program and having specific hardware-related technical features such as computers and databases will therefore be accepted in the formality examination stage.
In the substantive examination stage, the examiner should assess whether the subject-matter has a technical character, in particular whether the combination of technical and non-technical features produces a further technical effect.
3. Examples of other technical effects
In case a computer program-related subject-matter has a technical character other than that it is computer-implemented, a corresponding computer program that implements the features of this subject-matter will produce a further technical effect when running on the computer. For example, a computer program which implements a method for controlling an anti-lock braking system (ABS) in a car, determining emissions by an X-ray device, compressing video, restoring a distorted digital image, or encrypting communications will bring about a further technical effect when it is run on a computer, that effect is anti-lock braking in cars, emission detection, video compression, distorted digital image recovery, communication encryption.
Furthermore, if a computer program is designed based on specific technical considerations the internal functioning of the computer on which it is to be executed, such as being adapted to the specific architecture of the computer, it may be considered to produce a further technical effect. For example, computer programs implementing security measures to protect boot integrity or countermeasures against power analysis attacks have a technical character since they rely on a technical understanding of the internal functioning of the computer. Similarly, the computer programs controlling the internal functioning or operation of a computer, such as a processor load balancing or memory allocation, normally produce a further technical effect, that is load balancing of the processor or memory allocation.
Programs for processing code at a low level, such as builders or compilers, may well have a technical character. For example, when building runtime objects from development objects, regenerating only those runtime objects resulting from modified development objects contributes to produce the further technical effect of limiting the resources needed for a particular build.
However, a computer program for a non-technical purpose that requires less computation time than a known program for a similar purpose will not produce a further technical effect. Similarly, comparing a computer program to the way a human performs a task would not be an appropriate basis for judging whether the program has a technical character.
The subject-matter of a computer program-related invention cannot be considered to have a technical character only because the computer program is designed so that it can be implemented automatically by the computer. Other technical considerations are required, often related to technical considerations of the internal functioning of a computer, in addition to simply finding a computer algorithm to perform a task. They must be reflected in the claimed features that produce a further technical effect.
4. Some forms of subject-matters related to computer program
This section refers to some forms of subject-matters related to a computer program that are stipulated in Article 5.8.2.5 of the Guidelines for Patent Examination, in particular the forms in which the computer program implements features related to mathematical methods; artificial intelligence and machine learning; simulation, design or modelling; schemes, rules and methods of playing games; business methods; information modelling, activities of programming and programming languages; data retrieval, formats and structures; systems of database management and information retrieval; presentations of information; user interfaces. For each form of subject-matter related to a computer program, there are specific instructions on how to determine whether the features implemented by the program make a technical contribution and produce a technical effect.
4.1. Implementation of mathematical method
A mathematical method may contribute to the technical character of the invention when it is applied to a technical field with a specific technical purpose, e.g. analysing sound, digital image; encoding and decoding data for transmission or storage; providing a genotype estimate based on an analysis of DNA samples; providing a medical diagnosis by an automated system processing physiological measurements, and/or is adapted to a specific technical implementation, for example adapting a polynomial function reduction algorithm for exploiting word size translation steps that match the word size of computer hardware are based on technical considerations of the internal functioning of a computer and can contribute to creating a technical effect of an efficient hardware implementation embodiment of this algorithm.
Furthermore, the mere fact that a mathematical method may serve a technical purpose is not sufficient, either. The claim is to be functionally limited to the technical purpose, either explicitly or implicitly by establishing a sufficient link between the technical purpose and the mathematical method steps, for example, by specifying how the input and the output of the sequence of mathematical steps relate to the technical purpose so that the mathematical method is causally linked to a technical effect.
Defining the nature of the data input of the mathematical method does not necessarily imply that the mathematical method contributes to the technical character of the invention. Whether a mathematical method serves a technical purpose is determined primarily by the direct technical relevance of the results it provides.
If the mathematical method does not serve a technical purpose and the claimed technical implementation does not go beyond a generic technical implementation, the mathematical method does not contribute to the technical character of the invention. In such a case, it is not sufficient that the mathematical method is algorithmically more efficient than prior-art mathematical methods to establish a technical effect
Example:
A method is implemented by a computer to control a specific physical process by analyzing the functional relationship between two parameters, the method includes the following steps:
– [ … mathematical calculation steps …];
– therein:
– the range of values of one of the parameters is extended according to the data generated for use in the control of the physical process mentioned above.
The claimed subject-matter relates to a computer program, in which the program implements a mathematical method of analyzing the functional relationship between two parameters. To assess whether this subject-matter as a whole, has technical character or not, it is insufficient to rely solely on features such as “implemented by computer” because it has not yet been determined whether a specific implementation is beyond the conventional technical implementation, or the purpose is for “controlling a specific physical process”. It is important here to determine whether there is a sufficient relationship between the technical purpose and the mathematical method implemented by the software. It can be seen that the input and output of this mathematical method are related to the technical purpose and its result “the range of values of one of the parameters is extended” directly affects the “controlling a specific physical process”. Therefore, this subject-matter is considered to produce a further technical effect and is protectable as an invention.
4.2. Artificial intelligence and machine learning
Artificial intelligence and machine learning are based on computational models and algorithms for classification, clustering, regression, and dimensionality reduction, such as neural networks, genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis. Such computational models and algorithms are per se of an abstract mathematical nature, irrespective of whether they can be “trained” based on training data.
Terms such as “support vector machine”, “reasoning engine”, or “neural network” may, depending on the context, merely refer to abstract models or algorithms and thus do not necessarily imply the use of technical means. This has to be taken into account when examining whether the claimed subject-matter, as a whole, has technical character.
Artificial intelligence and machine learning are applied in various fields of technology. For example, the use of a neural network in heart-monitoring apparatus for the purpose of identifying irregular heartbeats makes a technical contribution. The classification of digital images, videos, audio, or speech signals based on low-level features (e.g., edges or pixel attributes for images) are further typical technical applications of classification algorithms.
However, classifying text documents solely in respect of their textual content is not regarded to be per se a technical purpose but a linguistic one. Classifying abstract data records or even “telecommunication network data records” without any indication of technical use being made of the resulting classification is also not per se a technical purpose, even if the classification algorithm may be considered to have valuable mathematical properties such as robustness.
Where a classification method serves a technical purpose, the steps of generating the training set and training the classifier may also contribute to the technical character of the invention if they support achieving the technical purpose.
Example 1:
The system for estimating the generated electricity capacity of the hydroelectricity of the dam implemented by a computer includes: a neural network which is built in the form of an information processor, a neural network with an input layer and an output layer in which the input data inputs to the input layer contains the temperature of the upstream river during the predefined time duration between the reference time and the predefined time preceding the reference time.
It is easy to see that the feature wherein the neural network uses input data as a physical quantity including the temperature of the upstream river during the predefined time duration between the reference time and the predefined time preceding the reference time can bring about a significant effect on the accuracy of the estimated result of the generated electricity capacity of the hydroelectricity generated by the said neural network. Therefore, this feature is considered to serve a specific technical purpose and contribute to the technical character of the invention. Therefore, the above subject-matter can be protectable as an invention.
Example 2:
A computer-readable storage medium containing therein a computer program operates to make the computer work to output quantitative values about a hotel’s reputation based on textual data about the hotel’s reputation, wherein:
this program includes the first neural network and the second neural network connected in such a way that the second neural network receives the output from the said first neural network;
the said first neural network includes the input layer to the intermediate layers of the characterized extraction neural network, in which in this characterized extraction neural network the number of neurons of at least one intermediate layer is smaller than the number of neurons of the characterized extraction neural network of an input layer, the number of neurons of the input layer and the output layer are the same and the weights have been trained in such a way that each input value for the input layer and each output value corresponding from the output layer should be equal;
the weights of the said second neural network have been trained without changing the weights of the said first neural network; and
the program that causes the computer to perform a calculation based on the said trained weights in the said first and second neural networks in response to the frequency of occurrence of particular words obtained from the textual data of the hotel’s reputation is entered into the input layer of the first neural network and to output the quantified values of the hotel’s reputation from the output layer of the said second neural network.
The claimed subject-matter relates to computer-readable storage medium which stores therein a computer program to make the computer work to output quantitative values about a hotel’s reputation based on the textual data about the hotel’s reputation. Although the purpose of “outputting quantitative values about the hotel’s reputation” may be considered as not having a technical character, but serving a business purpose, the features cited in the claim identify a particular technical implementation embodiment that goes beyond aspects of a mere business method, namely that the first and second neural networks receive output from the first neural network, where the first neural network includes the input layer to the intermediate layers of a characterized extraction neural network, this characterized extraction neural network has the number of neurons of at least one intermediate layer less than the number of neurons of the input layer, the number of neurons of the input layer and the output layer are the same, and the weights have been trained in such a way that each input value for the input layer and each corresponding output value from the output layer become equal.
Thus, according to the characteristics of this characterized extraction neural network, the intermediate layer will obtain the characterized values representing the characteristics of each input data. These characterized values can be compressed to retain only important characteristics in the intermediate layers with a smaller number of neurons in the input layer. Although the characterized values appearing in the intermediate layer need not have explicit physical implications, these characterized values are compressed but still ensure that the input information introduced into the input layer can be restored into output information from the output layer, and the characterized values that appear in the intermediate layer become almost the same regardless of the input featured values introduced into the input layer. According to the present invention, the weights of the second neural network are trained without changing the weights of the said first neural network. This training is performed by a widely known technique called backpropagation. Therefore, the above program can accurately analyze the reputation of the hotels without appropriately selecting the input characterized values to be introduced into the input layer (no need to set the characterized values in advance). Therefore, according to the aspect of preprocessing the training data for machine learning, this feature is considered to serve a technical purpose, and contribute to the technical character of the present invention. Therefore, the above subject-matter can be protectable as an invention.
4.3. Simulation, design or modelling
A simulation performed by a computer of the behavior of a satisfactorily defined class of technical products or specific technical processes that, under technically suitable conditions, qualifies as a technical purpose, for example a numerical simulation of the performance of the interference-resistant circuit 1/f or of a particular industrial chemical process.
Such computer simulation methods cannot be denied about technical effects solely on the basis that they precede actual production and/or do not include the production step of the tangible end product.
In contrast, the simulation of non-technical processes, such as a marketing campaign, a management scheme for transporting goods or defining a schedule for agents in a call center does not represent a technical purpose. In addition, general limitations, such as “simulation of a technical system”, do not define a valid technical purpose.
In the context of the computer-aided design of a particular technical subject-matter (product, system or process), the determination of specifications that are intrinsically linked to the function of the technical subject, where this determination
