Richard Yong WANG  Partner, Attorney-at-law and Patent Attorney

The China National Intellectual Property Administration (CNIPA) issued Order No. 84 on November 10, 2025, refining Section 6.4 of Chapter 4 in Part II of the "Patent Examination Guidelines" (hereinafter referred to as the "Guidelines"), clarifying that "features that do not contribute to solving the technical problem" generally do not affect the assessment of inventive step. Since the standards for inventive step examination have always been a focal and challenging issue in patent applications and examinations, this revision has sparked widespread attention and discussion within the industry. This article will analyze the impact of this revision on inventive step examination from four dimensions: the background of the revision, the legal rationale, the analysis of contribution under technical problems, and practical responses.

Before-and-After Comparison Table

I. Nature of the Revision: Radical Shift or Refinement of Rules?

Regarding this revision, the industry’s primary concern is whether there has been a substantive change in the criteria for inventive step examination. Based on official interpretations and an analysis of legal principles, the author contends that this revision demonstrates notable characteristics of "stability" and "guidance."

1. Stability of the Examination System

This revision explicitly states that the assessment of inventive step should still follow the "three-step approach" stipulated in the original "Guidelines": determining the closest prior art, identifying the actual technical problem to be solved by the invention, and judging whether the prior art provides technical inspiration. This indicates that the underlying logic and criteria for inventive step examination have not undergone fundamental changes. Therefore, examiners must still establish a baseline through prior art searches when reviewing claims, identify distinguishing technical features by comparing them with prior art references, and determine whether the improvement would have been obvious from the perspective of a person skilled in the art. Thus, this revision does not constitute a fundamental change to the inventive step examination system but rather represents a localized optimization of the existing examination framework.

2. Formalization of Practical Experience into Guidelines

In fact, in examination practice over the past years, examiners have developed a routine and mature approach for cases where claims include an accumulation or dispersal of extensive common knowledge or conventional technical means. Specifically, when a claim contains numerous distinguishing features, if these features are merely conventional means in the field and do not produce a synergistic effect, examiners typically consolidate and collectively address them, arguing they do not contribute to inventive step. This revision essentially elevates this long-standing examination practice into formal rules and regulations. Its purpose is to provide clear guidance to both examiners and the industry, enhance the consistency and predictability of examination standards, and reduce inconsistencies arising from subjective interpretation differences among examiners.

II. Analysis on Core Amendment: Technical Contribution and Holistic Evaluation

The core of this revision lies in the refined treatment of the concept of "technical contribution" and the repositioning of the "holistic principle" within the examination process.

1. Relocating the Position of the "Holistic Principle"

This revision moves the statement that "the evaluation shall be based on the technical solution as a whole as defined by the claims" from the end of the section to the the first paragraph. This adjustment carries symbolic significance, as it requires examiners to adopt a "holistic view" of the technical solution from the very first step of reviewing the claims, rather than falling into the trap of "feature-by-feature comparison." Additionally, it clearly conveys to applicants that the "quantity" of distinguishing technical features does not equate to the "quality" of inventive step. If multiple distinguishing features are merely simple accumulations or combinations of existing technical features, their inventive merit may be far inferior to that of a single transformative core feature.

2. Deep Integration of the "Contribution Analysis" Method

This revision emphasizes the role of "contribution analysis" in assessing inventive step. According to this provision, the distinguishing features of a claim can be categorized into two sets: features that contribute and features that do not. Features that contribute refer to those that produce unexpected technical effects or reflect the overcoming of technical prejudice, thereby contributing to solving the technical problem addressed by the invention. These features represent the "soul" of inventive step and must be included in the claims; otherwise, even if described in the specification, they are not considered during the evaluation of inventive step. Features that do not contribute refer to those unrelated to the technical problem solved by the invention, or those that are conventional or implicit in the field. The new "Guidelines" explicitly state that such non-contributory features should be disregarded in the evaluation of inventive step, even if they are included in the claims.

III. In-depth Analysis: Feature Correlation and Combination Analysis under Technical Problems

In both prosecution and examination practice, the most complex and common scenario involves claims with multiple distinguishing features. These features may be directed toward the same technical objective, addressing one or multiple technical problems, or they may be directed toward different technical objectives, addressing distinct technical problems. Determining which technical features "contribute" in accordance with the new "Guidelines" will be a challenging aspect in future inventive step evaluations. The author proposes that analysis and argumentation can proceed from the following two perspectives:

1. Integrated Contribution to a Single Technical Problem

If all the distinguishing technical features of an independent claim collectively and directly or indirectly address the same technical problem, and there exists a functional relationship of mutual support or interaction among them, then each distinguishing technical feature can be regarded as contributing to the solution of that problem and must be considered as a whole. In such cases, when responding to inventive step objections, applicants should emphasize the "chemical reaction" or "synergistic effect" among the features, for example, how feature A creates the precondition for the application of feature B, or how the combination of features A and B produces a technical effect where 1+1>2. In this context, each feature constitutes a component of the inventive step.

2. Scenario Involving Multiple Technical Problems

In practice, it is common for the multiple distinguishing technical features of an independent claim to "operate independently." Taking the example provided in this revision: distinguishing technical features A (mechanical structure), B (circuit structure), and C (control method) are related to the camera's shutter structure, collectively improving the shutter control mechanism to address the issue of "shutter control flexibility" (Problem X). Meanwhile, distinguishing technical features D and E involve the color of the casing or the size of the display screen, aiming to address issues of "aesthetics" or "portability" (Problem Y). In accordance with examination practice and the spirit of this revision, if the specification does not indicate any connection between features D and E and the resolution of the core problem X, and if these features constitute conventional means in the field, they will be deemed "non-contributory features" with respect to solving technical problem X when evaluating inventive step.

Meanwhile, since there is no synergistic effect between the distinct technical feature sets {A, B, C} and {D, E}, which do not collectively address a same technical problem but instead solve different technical issues separately, the claim is essentially regarded in legal theory as a simple combination of two different technical solutions. The applicant may choose either technical solution (typically selecting the relatively most innovative one, such as the solution addressing problem X) for arguments supporting inventiveness. Of course, if both technical solutions potentially possess inventiveness, the applicant may also present separate arguments for inventiveness for each solution. This situation usually arises from improper drafting of the application documents, as experienced patent attorneys could have drafted them as different independent claims from the outset, protected them in separate applications, or structured them hierarchically based on their respective levels of inventiveness.

Therefore, the applicant must clearly recognize that since technical features D and E have been determined to "not contribute to" technical problem X, they cannot provide additional inventive value to the overall solution. If the core distinguishing technical features {A, B, C} are covered by prior art or deemed obvious, then adding any number of D and E features will not save the patent or patent application.

IV. Practical Strategy Recommendations

1. Drafting Phase

Patent attorneys and inventors must fully recognize the technical problems that the invention aims to solve and is capable of solving during the drafting stage. They should precisely distill the inventive concept and focus on the core technical contribution. Correspondingly, independent claims should center on the features that genuinely contribute to solving a specific technical problem, ensuring the features are "few but essential." This not only makes it easier to establish the inventive step but also avoids the inclusion of unnecessary technical features in the claims, thereby expanding the scope of protection as much as possible while maintaining the inventive step. Additionally, when drafting the specification, it is essential to clearly document the correspondence between all key features in the claims and the technical problems. Causal links between technical features and technical problems should be established through logical reasoning, theoretical deduction, or experimental verification.

Continuing with the example provided in this amendment, the applicant may draft the application documents by highlighting the technical contribution as follows:

Distinguishing Technical Features: Add a specific signal feedback loop to the circuit control module (Feature A), and correspondingly improve the current compensation algorithm for the shutter drive electromagnet (Feature B).

Corresponding Technical Problem: Address the issue of inconsistent shutter response delays during high-speed continuous shooting, enabling more flexible and precise shutter control.

Corresponding Technical Effect: By utilizing Feature A to monitor the shutter status in real time and Feature B to dynamically compensate the current, the deviation in shutter response time is reduced, effectively preventing out-of-focus images during high-speed continuous shooting.

It is obvious that Features A and B directly contribute to solving the technical problem and should therefore serve as the foundation for assessing inventiveness.

In contrast, if the description and claims include the following distinguishing technical features: a streamlined design of the housing (Feature C) and an increased display size of 5.5 inches (Feature D), the corresponding technical problem is to enhance the camera’s aesthetic appeal and viewing clarity.

During the examination process, if the core inventive problem is determined to be "shutter control," features such as C and D bear no functional correlation to solving this problem. In the assessment of inventiveness, these features will be deemed non-contributory to resolving the technical problem.

If a specific feature (such as a particular display size) does indeed influence the core functionality (for example, assisting with shutter focusing speed) in a given scenario, the description must thoroughly document this causal relationship, supported by data, structural explanations, or theoretical evidence.

2. Response Phase

When responding to inventive step objections, it is essential to completely abandon the tactic of simply amassing features and instead shift towards argumentation based on "contribution", focusing the argument on explaining why and how the distinguishing technical features contribute to solving the technical problem. This requires the patent agent to possess a deeper technical understanding, enabling them to argue from fundamental principles—such as physical mechanisms, circuit logic, or chemical reactions—to demonstrate the indispensability of the distinguishing features for resolving the technical issue. Simultaneously, it is crucial to strengthen evidence awareness by proactively utilizing comparative experimental data or test reports to prove the existence of the technical effects. When demonstrating these effects, priority should be given to the comparative experimental data, test reports, or simulation results documented in the specification. Objective evidence serves as the most powerful weapon to refute any assertion of "non-contribution."

V. Conclusion: Emphasizing the Legal Essence of Inventiveness

The revision of the 2025 Guidelines does not raise the threshold for inventiveness. Instead, by refining examination operational rules, it blocks speculative practices like "feature amassment" at the institutional gate. It conveys a clear message to applicants and patent agents: inventiveness represents the legal respect for the height of innovation; it has nothing to do with the length or complexity of claim wording but is solely concerned with the substantive contribution the invention makes to the prior art. For genuine innovators, this represents a higher level of protection. It ensures examination resources are focused on technologies with substantive innovative value, enhancing the consistency and authority of the examination process. In the future patent landscape, only those inventions that can clearly construct a logical chain linking "features-problems-effects" and genuinely solve technical pain points will secure robust and high-quality patent protection.

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. Mr. Wang joined Panawell in January 2007.

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.