Mr. Richard Yong Wang

Lawyer & Patent Attorney

 

By the inventiveness, or inventive step, the most important required element for patenting, and representing the innovative height of, an invention-creation, is meant that an invention exhibits prominent substantial characteristics, and represents significant progress or advancement compared with the prior art. According to the examination practice, examiners would issue office actions on the inventiveness of over 60% of the patent applications in the examination process, which may be cited as grounds for rejection or invalidation. Clarifying the standards or benchmark for the examination of inventiveness of inventions is of great significance for improving the quality and effectiveness of granted patents, and for encouraging and supporting innovation activities in the nation. Therefore, in the 2023 Guidelines for Patent Examination (GPE), some important and meaningful amendments have been made to amplify the provisions or rules related to determining the closest prior art, technical problems actually solved by inventions, and those related to the types of evidence of common knowledge.

 

Pursuant to Article 22.3 of the Chinese Patent Law, to determine whether an invention possesses inventiveness, it should be judged whether the invention has prominent substantial characteristics, and at the same time, whether it represents significant progress. In determining inventiveness, China's Patent Law adopts the standards of "prominent substantial characteristics" and "significant progress". These standards are essentially similar to the "non-obviousness" and "inventive step" standards adopted by the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). However, it emphasizes that the invention must exhibit significant progress, and produce beneficial technical effects compared with the prior art.

 

I. Regarding Prominent Substantial Characteristics Examination

 

Under the GPE provisions, determining whether an invention possesses prominent substantial characteristics entails assessing whether the invention, as perceived by those skilled in the art, is obvious relative to the prior art. In other words, if the invention can be derived merely from logical analysis, reasoning, or limited experimentation by those skilled in the art based on the prior art, then it is considered obvious. When assessing whether an invention is obvious, the so-called "three-step approach" is typically employed in the examination, which is essentially consistent with the EPO examination rules, and follows a problem-solution approach. Although other examination methods have been proposed theoretically and judicially, the three-step approach remains the mainstream method used in the procedures of examination, reexamination and invalidation, as well as in administrative litigation. Therefore, the examination standards and defense strategies regarding the prominent substantial characteristics of inventions (i.e., non-obviousness) will be discussed below according to the sequence of the three-step approach examination.

 

Step 1: Closest prior art determination

 

The closest prior art refers to a technical solution within the prior art that is most closely related to the claimed invention. It serves as the basis for determining whether the invention possesses prominent substantial characteristics. In practice, the prior art, including the closest prior art, is typically obtained through search. The documents retrieved from the search often include numerous references, among which only one document or technical solution can be considered the closest prior art. The selection principle is generally to choose the prior art that is most closely related to the claimed invention in terms of technical field, technical problem to be solved, technical effects or use, and/or something that discloses most technical features of the invention. Alternatively, if the technical field differs from that of the invention, the closest prior art may be selected based on its capability of achieving the function of the invention, and it discloses the most technical features of the invention.

 

However, choosing a different technical solution as the closest prior art possibly impact the final result of the inventiveness examination. Moreover, in practice, it has been observed that examiners sometimes tend to emphasize solely the number of common technical features between the claims of the application under examination and the prior art, while overlooking the relationship between the technical problem to be solved by the invention and that addressed or solved by the prior art. This could lead to some biases in assessing inventiveness.

 

Therefore, in the GPE as amended in 2023, on the basis of the provisions regarding the determination of the closest prior art that “primary consideration shall be given to a prior art that is identical or similar in technical field,” it has been added that, “wherein the prior art that is associated with the technical problems to be solved by the invention shall be primarily considered." The term "associated with" in relation to the technical problem emphasizes that there should be a connection between the technical problem to be solved by the application under examination and that of prior art. This connection could manifest in various ways, such as explicit recording of the invention's purpose or technical problem in prior art being identical with or similar to that to be solved by the application, or it could be inferred based on the recognition of the existence of such technical problem by those skilled in the art, even if not explicitly documented.

 

Generally, the purpose of an invention is to solve a technical problem, and achieve the technical effect through the technical solution. There is a technical connection between the prior art and the technical problem to be solved by the invention. Only when such a connection exists is the prior art more likely to be considered the closest prior art, and serve as the ideal starting point for achieving the invention's purpose. This amendment can guide the inventiveness examination to focus on reconstructing the starting point and process of invention-creation, reducing subjective arbitrariness when selecting the closest prior art, and avoiding, as much as possible, retrospective judgment in the examination process.

 

Step 2: Determination of distinguishing features of, and technical problem actually solved by, the invention

 

In step 2, the first task is to analyze the differences between the claimed invention and the closest prior art identified in Step 1, and then determine, based on these distinguishing features, the technical problem actually solved by the invention by considering the technical effects achievable through these features. In this sense, the technical problem actually solved by the invention refer to the technical task to improve the closest prior art in order to achieve better technical effect.

 

Determining the technical problem actually solved by the invention based on its distinguishing features serves as a link between the previous steps in the application of the "three-step approach" for the purpose of looking for the direction to find out technical suggestions or insights in step 3. The Gazette No. 328 issued by the China National Intellectual Property Administration (CNIPA) in 2019 has further refined the provisions regarding the determination of technical problem actually solved by the invention in the "three-step approach" outlined in the GPE. It explicitly states that the technical problem actually solved by the invention should be determined based on the technical effects achievable through the distinguishing features "in the claimed invention." Additionally, it emphasizes the principle of considering the technical solution as a whole, where, for the technical features supporting each other and interacting with one another in functionality, the technical effect achieved by the technical features and their relationship in the claimed invention should be globally considered.

 

Considering the significant importance of objectively analyzing and determining the technical problems actually solved by the invention in the whole process of the "three-step approach," this amendment further elaborates on the issues to be considered and specific exceptional circumstances when the technical problem is re-determined.

 

1) Issues to Consider When Determining Technical Problem

 

In practice, the closest prior art identified by examiners often differs from the prior art described by the applicant in the description. Therefore, when, in the examination practice, determining the technical problem actually solved by the invention based on the closest prior art identified by the examiner, it may differ from the technical problem described by the applicant in the description. In such cases, the technical problem actually solved by the invention should be re-determined based on the closest prior art identified by the examiner. However, during the examination or response to office actions, examiners or patent attorneys often exhibit two extreme understandings of the technical problem actually solved by the invention. They may either determine the problem too broadly, inappropriately expanding or generalizing the technical problem that the invention can actually solve, exaggerating, understating or distorting the technical effect it can achieve, or they may determine the problem too narrowly, allowing guidance on distinguishing features to be included or the distinguishing features directly included in the determined technical problem as the technical problem actually solved by the invention. This can easily lead to the conclusion that the invention is obvious, causing the inventiveness assessment to fall into the trap of hindsight bias.

 

To avoid the aforementioned problem, the 2023 GPE emphasize the objective analysis of the relationship between the technical features and technical effect when determining the technical problem actually solved by the invention. On the one hand, the technical effect achievable through the distinguishing features of the invention should be determined to make the re-determined technical problem align with the technical effect. On the other, the technical problem actually solved by the invention should not incorporate the technical means proposed by the invention to solve the problem. These technical means should neither be identified as distinguishing features themselves, nor include guidance or implications regarding the distinguishing features.

 

To further illustrate this principle, the 2023 GPE have adaptively included a case study involving a consumer electronic device. In this case, the claimed invention is a consumer electronic device that comprises a biometric authentication unit for user account authorization. This authentication unit is based on or utilizes a combination of fingerprint authentication and at least one other authentication method selected from palm print, iris, retinal, or facial features. The description states that using at least two authentication methods can enhance the user accounts security. The closest prior art discloses a consumer electronic device that only utilizes fingerprint information for identity authentication. The key difference lies in the invention's use of at least two biometric features for identity authentication. Based on the technical effect achievable through this distinguishing feature in the invention, the technical problem actually solved by the invention should be "how to enhance the user accounts security in consumer electronic devices," rather than "how to increase the usage of palm prints or other biometric authentication methods" or "how to enhance the security of consumer electronic devices by adding authentication methods." Otherwise, it would imply directly incorporating the "technical suggestion or insight" into the technical problem, which will affect the objective evaluation of inventiveness.

 

2) Addition of a Special Circumstance for Technical Problem Re-determination 

 

To the 2023 GPE has been added a special circumstance for re-determining the "technical problem actually solved by the invention," which occurs when all the technical effects of the invention are equivalent to those of the closest prior art. In such instances, the re-determined technical problem provides an alternative technical solution different from the closest prior art. This addition is prompted by the observation that in the examination practice, certain inventions exhibit equivalent technical effects compared with the closest prior art, without demonstrating "better technical effects," yet they offer an alternative technical solution with a different technical concept. The provisions of the former GPE on the technical problem re-determination did not cover this scenario. The amended GPE include "providing an alternative technical solution different from the closest prior art" as a special circumstance for re-determining the technical problem actually solved by the invention, aiming to comprehensively reflect the patterns and characteristics of innovation making. It's important to note that defining the technical problem as "providing an alternative technical solution different from the closest prior art" does not necessarily imply that the proposed technical solution does, or does not, possess inventiveness. It is still required to determine, based on the technical problem, whether the invention is obvious to those skilled in the art.

 

Step 3: Determination of whether the claimed invention is obvious to those skilled in the art 

 

In this step, starting from the closest prior art and the technical problem actually solved by the invention determined in Step 2, it is determined whether the invention is obvious to those skilled in the art. In this determination, what needs to be ascertained is whether there is a technical suggestion or insight within the prior art as a whole, namely, whether the prior art suggests applying said distinguishing features to the closest prior art to solve its existing technical problem (i.e., the technical problem actually solved by the invention). Such a suggestion would motivate those skilled in the art, when faced with said technical problem, to improve the closest prior art, and thereby arrive at the claimed invention. If such a technical suggestion exists in the prior art, the invention is deemed obvious, and lacks prominent substantial features.

 

The presence of any one of the following circumstances would typically suggest the existence of such a technical suggestion in the prior art:

 

(1) Said distinguishing features are common knowledge, e.g., regular means, used in the field to solve the re-determined technical problem or technical means disclosed in textbooks, technical dictionaries, technical manuals, and other reference materials to solve the re-determined technical problem.

 

(2) Said distinguishing features are technical means related to the closest prior art, e.g., technical means disclosed in other parts of the same reference. These technical means serve the same purpose as the distinguishing features in the claimed invention to solve the re-determined technical problem.

 

(3) Said distinguishing features are technical means disclosed in another reference, where these means serve the same purpose as the distinguishing features in the claimed invention to solve the re-determined technical problem.

 

In years of practice as a patent attorney, this author has observed an implicit two-step logic in step 3, involving: 1) determining whether the distinguishing features are disclosed in the prior art; and 2) determining whether the prior art provides a suggestion to apply these disclosed distinguishing features to the closest prior art to solve its existing technical problems.

 

Specifically, in determination point 1), it should be first ascertained whether the distinguishing features identified in Step 2 are disclosed in any prior art other than the closest prior art. If at least one of these distinguishing features is not disclosed in any other prior art, further examination is required to ascertain whether these undisclosed distinguishing features constitute common knowledge or regular technical means in the field. If the answer is negative, meaning that these distinguishing features are not common knowledge or regular technical means in the field, then it is, typically, not necessary to proceed to said determination point 2). In such cases, the claimed invention can be directly deemed non-obvious to those skilled in the art. This is because if at least one distinguishing feature is not disclosed in the prior art, it is unlikely that there would be any suggestion in the prior art to apply those distinguishing features to the closest prior art to solve its existing technical problems.

 

If the result of determination point 1) is affirmative, meaning that all the distinguishing features are disclosed in the prior art or it is determined that all these distinguishing features are common knowledge, then it is still necessary to ascertain whether the prior art provides a suggestion to apply these distinguishing features to the closest prior art to solve its existing technical problems, thus proceeding to determination point 2). Furthermore, within the determination point 2), the suggestion includes two scenarios: A) whether there is a suggestion in the prior art to combine these distinguishing features with the closest prior art; and B) whether there is a suggestion in the prior art that such a combination can be used to solve the technical problems identified in step 2. These suggestions can be explicitly disclosed in the prior art or readily inferred by those skilled in the art from reading the prior art. If either suggestion is lacking, it cannot be concluded that the prior art provides a suggestion to apply these distinguishing features to the closest prior art to solve its existing technical problems.

 

In step 3, there has been a longstanding issue troubling examiners and other practitioners regarding the burden of proof with respect to common knowledge. The 2023 GPE responded positively to this issue. The last paragraph in Section 4.10.2.2 (4) of Chapter Eight in Part II of the GPE lays out the requirements to examiners when invoking common knowledge argument in the examination office action, refining and clarifying the provisions concerning citation of common knowledge in the office action. Firstly, the sequence of responses from the examiners when applicants object to a common knowledge citation has been adjusted, changing from "explain the reasons or provide the corresponding evidence " to "provide the corresponding evidence or explain the reasons", thereby clarifying the principle of examiner's priority in presenting evidence when the applicant disputes the common knowledge cited by the examiner. Secondly, at the end of this paragraph, a sentence has been added: "In the examination office action, when the examiner determines the technical features contributing to the solution of technical problems in the claim as common knowledge, they generally should provide evidence for such determination", which outlines the principle requirement that examiners should generally provide evidence when they determine the "invention points" asserted by the applicant as common knowledge. This would strengthen the evidence awareness of examiners, and clarifies the requirement for providing evidence.

 

II. Regarding Significant Progress Assessment

 

Under the GPE provisions, when assessing whether an invention represents a significant progress or advancement, the main consideration should be given to whether the invention has beneficial technical effects. The GPE list several beneficial technical effects, for example, the invention has better technical effect or performance than the prior art, such as improved quality, increased production yield, energy savings, or environmental pollution prevention and control; the invention provides a technical solution with a different conceptual approach, achieving technical effects that are generally comparable to the prior art; the invention represents a new trend in technological development; and despite its negative effects in some aspects, the invention has significantly positive technical effects in other aspects.

 

The 2023 GPE did not make any amendments to the provisions for determining significant progress, but it is evident that, in practice, with the advancement of technology and understanding, considerations regarding technical effects are not limited to the listed items mentioned above.

 

To conclude, the amendments made to the 2023 GPE have systematically improved the approach to inventiveness examination with an aim to offer guidance and standardization for examiners to correctly understand the legislative purpose and legal implications of inventiveness, grasping the essence of inventions, and objectively and fairly assessing their contribution to the prior art. Furthermore, these amendments can also encourage applicants to pay more attention to elucidating the essence of their inventions in their application and drafting process, facilitating more effective communication with examiners. This, in turn, will lead to better and timelier protection of genuine inventions-creations, enhance the quality of granted patents, and ultimately fulfill the role of the patent system in encouraging invention creation and promoting technological innovation.

 

 

Author:

Mr. Richard Yong WANG

 

Mr. Wang received his bachelor's degree in 1991 from the department of computer science of East China Normal University and his master's degree from the Institute of Computing Technology of the Chinese Academy of Sciences in 1994. In 2005, he received degree of master of laws from Renmin University of China. From 1994 to 2006, Mr. Wang worked with China Patent Agent (HK) Ltd, as a patent attorney and director of Electrical and Electronic Department. Mr. Wang joined Panawell in January 2007.

 

Mr. Wang is a member of the All-China Patent Attorneys Association (ACPAA), Sub-Committee of Electronic and Information Technology of ACPAA, LES China and AIPPI China, and FICPI China.

 

In the past years, Mr. Wang has handled thousands of patent applications for both domestic and foreign clients, and he has extensive experiences in application drafting, responding to office actions, patent reexamination and invalidation proceeding, patent administrative litigation, infringement litigation, software registration and integrated circuit layout design registration. As a very experienced patent attorney and attorney-at-law, Mr. Wang also participated in many patent litigation cases on behalf of a number of multinational companies as leading attorney. Mr. Wang's practices include computer hardware, computer software, communication technology, semiconductor devices and manufacturing process, automatic control, household electrical appliances, and etc.