A Study of Patent Prosecution to Overcome 35 USC 101 for Computer Software Inventions

• Main Authors: Ming-Chia Lee, 李銘佳
• Other Authors: Kuo-Tsan Liu
• Format: Others
• Language: zh-TW
• Published: 2019
• Online Access: http://ndltd.ncl.edu.tw/handle/3wannt

碩士 === 國立臺灣科技大學 === 專利研究所 === 107 === In worldwide，instructions using a processor or more processors and software associated with instruction can be used to process digital data or automation control，secure encryption mechanism，communication-related protocols，artificial intelligence algorithms and business methods，etc., the amount of related field patent is more and more。 The first challenge for such patent filed to USPTO in the United States is whether patent can be examined by Patent Subject Matter Eligibility，under the Patent Law of 35 U.S.C § 101 which USPTO released the newly and revised Manual of Patent Examining Procedure (MPEP) in January 2018。 Based on the Mayo/Alice judgment process commonly used in recently years，the section 2106 of the eligibility criteria was revised and incorporated into the new version of the guideline。Among them，there are clear definitions how to process judicial exception，the examples of eligibility/ineligibility claim and method of analysis in the eligibility of MPEP。However，due the United States is a case law country，if applicant just in the light of MPEP guide might not overcome the § 101 during the patent prosecution。 This thesis will do discovery about how to effectively describe the claim，how to recite the precedent to prove the claim are directed to improvements，add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment to transform the judicial exception into patent-eligible subject matter，amend the claim to persuasive examiner and sufficient to overcome directed to an abstract idea。