In the context of a globalised economy, companies often file patents in multiple countries and areas to protect their technological innovations. To reduce costs, companies often submit identical application documents across several countries and areas. However, due to differences in patent laws, if these documents are not appropriately adjusted according to local regulations and practices, the patent application may be rejected due to patent eligibility — especially for inventions involving computer technology, algorithms, and AI.
This article analyses the differences between China and the US in the assessment of patentable subject matter and patent eligibility through an exploration of key concepts and a case study. It aims to provide practical guidance for practitioners, helping them to tailor application documents to meet legal standards in different jurisdictions and reduce the likelihood of rejection.
Provisions on patentable subject matter in China
In China, the concept “technical solutions” is defined in Article 2 of the Patent Law, and non-patentable subject matter is excluded under Article 5 and Article 25. The law outlines the scope of patent protection. In practice, examiners often rely on Article 2 when rejecting applications on subject matter grounds.
Article 2 of the Patent Law of China states: “In this law, the term ‘invention-creations’ refers to inventions, utility models, and designs. ‘Invention’ means any new technical solutions relating to a product, a process, or improvement thereof. ‘Utility model’ means any new technical solution relating to the shape, the structure, or their combination of a product, which is fit for practical use. ‘Design’ means any new design of the shape, the pattern, or their combination, or the combination of the colour with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.”
The Patent Examination Guidelines elaborate on this definition: “Invention in the Patent Law refers to any new technical solution concerning a product, process, or improvement thereof. A technical solution is an aggregation of technical means applying the laws of nature to solve a technical problem. Technical means are embodied as technical features. A solution that does not adopt technical means to solve a technical problem and thereby does not achieve any technical effect in compliance with the laws of nature does not constitute a subject matter as defined in Article 2.2 of the Patent Law.”
Thus, when determining whether a claim constitutes a technical solution, examiners focus on three key elements:
Whether technical means are adopted;
Whether a technical problem is solved; and
Whether a technical effect is achieved.
In Chinese patent practice, the primary focus is on whether the claim includes technical means; i.e., technical features. If the claim explicitly includes technical features and these are not merely basic computer components, such as processors and memories, it is generally regarded as a technical solution. If the technical features are limited to such basic components, further analysis is required to determine whether the features related to algorithms or computer programs result in substantial improvements in computer performance. If such an improvement is demonstrated, the claim is also considered to constitute a technical solution.
US regulations on patentable subject matter/patent eligibility
In the US, the provisions on patent eligibility are reflected in Section 101 of the US Code: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
This section defines the scope of patentable subject matter. However, US case law has established judicial exceptions that exclude certain non-patentable subject matter, including:
Laws of nature – for example, physical, chemical, or biological laws;
Natural phenomena – such as naturally occurring substances or processes; and
Abstract ideas – including mathematical formulas, business methods, and mental activities.
The US patent examination process employs a two-step test to determine whether claims comply with Section 101:
Step 1 – determine whether a claim involves a non-patentable subject matter; e.g., laws of nature, natural phenomena, or abstract ideas.
Step 2 – if the claim involves such subject matter, further evaluate whether the claim contains ‘additional elements’ that integrate the abstract idea or judicial exception into a practical application. This step also assesses whether these additional elements include unconventional, non-routine technical features that significantly go beyond the judicial exception.
Case study: comparing patent eligibility in China and the US
Patent claim (example)
A method, comprising:
Determining at least two indexes for evaluation of a working result of a robot;
Acquiring values of the at least two indexes after the robot works using a control parameter set;
Determining a new parameter set using a multi-objective with a function containing the at least two indexes as an objective function…;
Acquiring the values of the at least two indexes after the robot works using the new parameter set;
Acquiring a plurality of parameter sets and values of the at least two indexes of the respective plurality of parameter sets, by repeated the determination of a new parameter set and the acquisition the values of the at least two indexes using the new parameter set; and
Performing display on a display unit, based on the respective values of the at least two indexes…
Examination result
In China, the patent was granted without any objection regarding subject matter eligibility, since all the features defined in the claims were recognised as technical features by the examiner. Therefore, the claim was considered as meeting the requirements of a technical solution.
Consequently, the Chinese examiner did not raise any objection regarding whether the claim constituted patentable subject matter.
In the US, however, the examiner asserted that “the foregoing bolded limitation(s)” constitutes judicial exceptions in terms of mental processes because, under the broadest reasonable interpretation, “the limitations can be performed in the human mind, or by a human using a pen and paper”.
The examiner also stated that “the underlined limitations” recite additional elements that do not integrate the recited judicial exception into a practical application. Thus, the claim was deemed ineligible.
Key differences between Chinese and US patent examination approaches
This case supports the above point that, under Chinese patent law, when determining whether a claim constitutes a technical solution, the examiner primarily focuses on whether the claim contains technical features; i.e., whether there are clear technical means. Additionally, since the claim explicitly describes a robot as the specific technical object, the examiner presumed the solution as being applied in the field of robotics, contributing to technological improvements, solving a technical problem, and achieving technical effects.
By contrast, in US patent examination, the examiner classified the features into those related to mental processes and additional elements, and if the additional elements do not integrate the recited judicial exception into a practical application, the claim is deemed ineligible. This demonstrates that US patent examination places greater emphasis on achieving a technical effect or goal when determining patent eligibility.
Practical implications
Due to these differences, when filing computer program- or algorithm-related patents in the US, adaptations of the claims from Chinese applications are necessary. The technical solutions should be closely integrated with practical applications, and the description should clearly illustrate the technological improvements brought to the application field.
For example, in the above case, the purpose of displaying parameters is to improve the robot’s trajectory control. To overcome the eligibility objection, the claim could include additional technical features related to trajectory control. Moreover, the description should specify the technical effects or performance improvements achieved in the robot’s control system.
Key differences between patent eligibility standards in China and the US
Patent practitioners would benefit from a clear understanding of the differences between Chinese and US patent laws when preparing patent applications. Gently adjusting claims to suit local legal standards may help to lower the chances of rejection.
This article offers insights into patent eligibility variations, providing guidance for drafting patents more effectively. Feedback and suggestions are warmly welcomed!
