Over two years after the Chinese Patent Law, the Implementing Regulations of the Chinese Patent Law and the Guidelines for Patent Examination were revised, the Chinese patent examination department continues to adjust the examination focal points and level to better reflect the purpose of the revision: to raise innovation capability and strengthen patent protection.
Recent trends in Chinese patent examination mainly concern common knowledge in evaluating the inventive step, examining whether the description is sufficiently disclosed, examining whether claims are supported by the description.
Common knowledge
Part II Chapter 4 of the Guidelines for Patent Examination prescribes that the examination principle for inventive step is: "to combine together different technical contents disclosed in one or more prior art documents to access the claimed invention". Under this principle, examiners commonly use at least one reference document in combination with common knowledge to evaluate inventive step.
Disputes between the applicant and the examiners often concentrate on whether one or more technical features constitute common knowledge. The applicant usually assumes that the examiner does not provide any evidence that the technical feature (inquired technical feature) belongs to common knowledge, and hopes to reverse the examiner's opinion, but this practice is often fruitless. Since relevant laws and regulations do not expressly provide that, in such a case, the examiner bears the burden of proof, the counterargument referring to common knowledge becomes difficult in response to an inventive step objection.
The Chinese Guidelines for Patent Examination define common knowledge as a customary means in the art to solve the redetermined technical problem according to the closest prior art, such as a technical means disclosed in a textbook or reference book. According to this definition, the elements of common knowledge are the technical problem to be solved and the technical feature belonging to a customary means or presented in a textbook or a reference book.
If the examiner introduces common knowledge in evaluating the inventive step, the applicant has various options in how to respond, as discussed below.
Pointing out common knowledge
They can point out the specific technical means included in the relevant common knowledge in the art and emphasise the difference between the specific technical means and the inquired technical feature. As the applicant will not agree that the inquired technical feature is common knowledge, they can find out and present the true common knowledge to the examiner.
Specifically speaking, the applicant can cite one or more authoritative textbook or reference book in the art according to the redetermined technical problem, find out recorded technical means to solve the redetermined technical problem from the textbooks or reference books, and illustrate that these technical means are common knowledge in the art. Further, the applicant can compare these technical means with the inquired technical feature of claims of the present and carefully analyse the difference in technical implementation between the two, to further prove that the inquired technical feature is distinct from the common knowledge in the art.
Of course, if relevant written records can be found in the reference documents cited by the examiner or other publications in the art to prove that under normal circumstances the inquired technical feature would not be adopted to solve the above technical problem, then the applicant has a better chance of persuading the examiner.
Using technical effect
The applicant can also show that the inquired technical feature was not public knowledge using its technical effect. In Chinese Patent Law, technical effect is the best evidence of innovativeness. If one technical solution can have an unexpected technical effect then it definitely possesses inventiveness.
The applicant can illustrate that the function of the inquired technical feature during the process of solving the redetermined technical problem is not easily conceivable for those skilled in the art and the technical effect directly produced by the technical feature is also unforeseeable or unimaginable, based on the content of the description.
In other words, before reading the relevant documents of the application, those skilled in the art may be aware that the technical feature has other technical effects, but not be able to work out how to use the technical feature to solve the redetermined technical problem. This means that by achieving the technical effect of the present application, the performance or advantages brought about by the inquired technical feature exceed the expectation of those skilled in the art and such a technical feature is certainly not common knowledge in the art.
If the description of the present application does not specifically record the technical effect corresponding to the inquired technical feature, then the applicant can omit the inquired technical feature from the solution protected by the claims of the application. At this time, the remaining technical features cannot form a complete technical solution and of course, cannot solve the redetermined technical problem. As a result, the inquired technical feature brings prominent contributions to the whole solution of the claims of the application. Moreover, the applicant can also further state, only after reading the application documents, that those skilled in the art can understand that the technical feature has technical effects corresponding to the technical problem, to prove that such a technical effect is not common in the art. The inquired technical feature makes prominent contributions and has the technical effect which is not common in the art, and also certainly does not belong to common knowledge in the art.
Analysing interaction
The applicant can analyse the interaction between the inquired technical feature and other technical features. Technical features in the independent claim or the dependent claim are not isolated, but an organic whole that interacts and influences other parts. One technical feature itself of a claim seems to belong to the conventional selection, but if the interaction between one technical feature and others can solve one technical problem and achieve one technical effect which is different from that achieved when the technical feature exists independently, then, the technical feature does not meet the definition of common knowledge.
In Chinese patent application no 03121391.X, the independent claim seeks to protect a method of supporting a multi-kilomega ethernet terminal photoelectric multiplex. This method includes: setting up a user port relative to kilomega electric interface and a user port relative to kilomega optical interface for each user link by using an application-specific integrated circuit with a physical layer having the function of line diagnostics and port multiplexing, and; according to the inputted real-time detection signal for the link state of the two user ports, determining the active user port, setting the determined active user port as enable port, and using the enable port to transmit the data information of the user link.
The examiner cited two reference documents and deemed that the technical feature "setting the determined active user port as enable port", which was not disclosed in the reference documents, belonged to the common knowledge in the art.
The applicant deemed that although the innovation point of the above technical feature does not seem obvious, the technical feature plays a fundamental role in the whole technical solution and does not belong to common knowledge. For this reason, it was argued that the interaction between the technical feature and other technical features, specifically that the technical effect produced by the technical feature itself – "setting the determined active user port as enable port" – ensures that the enable port is capable of transmitting data. However, after the combination of the technical means and other technical features of claim 1, the enable electric interface or optical interface transmits user data according to the link states of different ports and does not need to replace the interface module to make the ethernet port capable of supporting both the electric interface and the optical interface. Moreover, in the photoelectric switch, it just needs to replace the interface without interrupting the user link.
When the technical feature is combined in claim 1 of the present application, claim 1 can achieve the technical effect that "the ethernet port can support both of the electric interface and the optical interface, and avoid defects such as photoelectric switch interrupting user link"; this is not a technical effect, which can be directly achieved through the technical means. As a result, "setting the determined active user port as an enable port" is not common knowledge in the art: this response convinced the examiner.
Sufficiently disclosing the technical solution
Article 26, paragraph 3 of the Chinese Patent Law provides that the description is to describe the invention or utility model sufficiently clearly so as to enable a person skilled in the relevant field of technology to carry it out. In recent Chinese patent examination practice, particularly when examining the invention, there has been increased effort in ensuring that this provision is properly met.
Recent office actions have shown that Chinese examiners are particularly strict in the following problems of sufficient disclosure.
Formulated technical terms
If the description includes a formulated technical term, the examiner can demand that the description clearly defines the technical term. If there is no clear definition, the examiner usually issues an office action stating that the application does not meet the requirements of sufficient disclosure.
Evidence is the most powerful argument against such office actions; the applicant needs to provide evidence that the term already has a clear definition in the art before the filing date. The definitions of the term in each piece of evidence should be consistent. If there are conflicting definitions or explanations in the evidence provided or those skilled in the art cannot use the evidence provided in conjunction with the application then the problem of insufficient disclosure is still not resolved.
Inventions relating to chemical materials
For invention patent applications where the innovation involves chemical materials, the applicant sometimes only discloses the specific structure and constituent content of the chemical material in the description, and does not record other more detailed information. This also constitutes insufficient disclosure; the description must disclose the experimental data of various implementation modalities in addition to a detailed description of the technical solution and its various implementation modalities, and explain how the technical solution of the application solves technical problems and obtains a technical effect. For a solution that obtains several technical effects, corresponding experimental data is needed for each technical effect.
Evaluating being supported by description
Previously, examiners depended on novelty and inventive step to avoid the scope of protection of claims that are too large. After the third revision of the Chinese Patent Law though, especially in 2011, more office actions began referring to the fact that claims cannot be supported by the description and the number of office actions issued because the scope of protection of claims has become too large.
In such office actions, the examiner's approach is usually to compare the technical features of each claim with the relevant embodiments in the description to discover a technical feature – a controversial technical feature – that is disclosed in the description but not in the claim. They then draw the conclusion that since the controversial technical feature is not defined in the claim, the claim cannot be supported by the description. The applicant needs to overcome this defect by adding the controversial technical feature into the claim.
Part II Chapter 2 3.2.1 of the Guidelines for Patent Examination indicates that whether claims are supported by the description, especially the relationship between the independent claims and the description, is closely related to the technical problem to be solved. Specifically, if the role of the controversial technical feature in the application is necessary to solve the technical problem together with other features of the claim, then those skilled in the art cannot reasonably predict that, besides the controversial technical feature, other variants or equivalent alternatives summarised by the claim can also ensure that the technical solution of the claim solves the technical problem, and the claimed lack of the controversial technical feature is not supported by the description. On the contrary, if the controversial technical feature does not play a direct role in solving the technical problem, those skilled in the art can obtain the existing technical solution of the scope of protection of the claim and favourably implement the technical solution according to the content of the description. The claim can then be supported by the description, and it is not necessary to add the controversial technical feature into the claim.
In Chinese patent application no 200910171949.7, claim 1 seeks to protect an optical filter to compensate for colour shift, mainly using a green wavelength absorption pattern provided with a predetermined thickness on the background layer, wherein the green wavelength absorption pattern absorbs a green wavelength of light. The examiner deemed that claim 1 did not define the arrangement mode and shape of the green wavelength absorption pattern as what is described in the description and cannot be supported by the description. The applicant needed to add the technical feature "green wavelength absorption stripes are separated from each other at predetermined interval and parallel to each other" into claim 1.
On the one hand, the purpose of claim 1 of the application is to minimise colour shift caused by an increase of visual angle, the function of the green wavelength absorption pattern is to absorb a green wavelength of light, and no matter how the green wavelength absorption pattern is arranged or what shape the green wavelength absorption pattern has, the green wavelength absorption pattern can absorb a green wavelength of light which is emitted at predetermined visual angle. As a result, those skilled in the art can use any modification within the scope defined by claim 1 to realise compensating for colour shift caused by an increase of visual angle, such as a stripe, wave, array, honeycomb and so on disclosed in the description.
On the other hand, "green wavelength absorption stripes are separated from each other at predetermined intervals and parallel to each other" in the description is only one embodiment given by the applicant, and such an arrangement and shape are to match the structure of the display which is just used as an example and does not have a direct relation to solving the problem of minimising colour shift. When the structure of the display is changed, those skilled in the art can make adaptive changes to the arrangement and shape of the green wavelength absorption pattern.
Claim 1 can be supported by the description even it does not define the arrangement and shape of the green wavelength absorption pattern. Finally, the examiner changed his original intention and deemed that the defects pointed out in the office action no longer exist.
Introducing the technical problem to be solved into responses to this type of office action is still being experimented with and observed. The above responses are only intended for cases where the evaluation of whether claims can be supported by the description arises because the scope of protection of the claims has been queried.
Given the concern in China over whether claims can be supported by the description, applicants need to adapt the scope of protection of the claims to the description, and pay attention to other aspects that may result in claims not being supported by the description. These include, for example, consistency between the claims and the description, support provided for the technical solution by working examples in chemicals, a detailed description of the alternative modes.
In conclusion, the continuous adjustment of examination standards and effort is to maintain and implement the spirit of Chinese patent law and regulations on a practical level. The previously strict examination of whether amendments go beyond the scope and recent concerns on the issues of common knowledge and whether they are sufficiently disclosed and supported, reflect the fact that Chinese patent examination work is pointed in a multi-level and multi-angle direction. To meet this requirement, patent applicants and patent attorneys need to adjust their strategy promptly and fully grasp the spirit of relevant Chinese laws and regulations so that they can maximise the protection of patent rights in China.
| Qi Wang |
Qi Wang is the co-founder of DEQI Intellectual Property Law Corporation. She earned her BS degree in electronics from Sun Yat-Sen University and then worked as an electronic R&D engineer in China’s equivalent of NASA before serving in a telecommunications equipment company for 10 years.
Wang has practised IP law for 16 years. She has extensive experience in drafting and prosecuting patent applications, patent reexaminations, appeals and invalidations in electronics, software, telecommunication and network fields. Her expertise also extends to patent validity, patentability and infringement opinions and she advises clients on patent strategy and IP management. She has also trained new IP lawyers and patent attorneys.
Qi Wang is a member of the All-China Patent Agents Association.
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| Quan Kang |
Quan Kang is a patent attorney at DEQI Intellectual Property Law Corporation. She earned her BS degree in mechanical engineering and automatisation and an MS degree in mechanism and automation engineering from Beijing Institute of Technology.
Kang has practised IP law for eight years. She focuses on drafting and prosecuting patent applications including inputting cases, patent reexaminations and invalidations in mechanics, industrial design and electronics. She also has experience in patent validity, patentability and infringement opinions.
Quan Kang is a member of the All-China Patent Agents Association.
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