The amendments to the contents about substantive examination of invention patent application of the Guidelines for Patent Examination focus on the following three aspects. 1. The determination of technical problem In accordance with the provisions of Guidelines for Patent Examination, “three-step approach” is usually used to assess the inventive step of an invention. The three-step approach” includes:
(Step1)determining the closest prior art;
(Step2) determining distinguishing features between the invention and the closest prior art by comparison, and determining the technical problem actually solved by the invention according to the technical effect of the distinguishing features;
(Step3) determining whether or not the claimed invention is obvious to a person skilled in the art.
In this amendment to Guidelines for Patent Examination, step2 of “determining the technical problem actually solved by the invention according to the technical effect of the distinguishing features” in the above three-step approach is amended to “determining the technical problem actually solved by the invention according to the technical effect of the distinguishing features in the claimed invention”. Further, “For the technical features that functionally support each other and have an interaction relationship, the technical effect that these technical features and their relationship could achieve in the claimed invention should be considered as a whole” is added in.
The above amendments to the contents about determination of technical problem will have little effect on the patent practice, because the examiner should do so when assessing inventive step of an invention before the Guidelines for Patent Examination is amended this time. This amendment only embodies this point in the text of the Guidelines for Patent Examination so that the applicant’s response has explicit provisions to support and is more convincing. 2. Burden of Proof for common sense This amendment clarifies that when the applicant questions the common sense cited in the OA, examiners shall follow the principle of providing evidence first and giving the reason later, and shall present evidence as far as possible. Further, “In the Office Action, the examiner shall usually present evidence to prove when recognizing the technical features in claims contributive to solve the technical problem as common sense” is added in.
Before this amendment, there may exist the case that examiners abuse common sense. This amendment strengthens the examiner’s burden of proof for common sense. The applicant could ask the examiner to present evidence when questioning the common sense cited by the examiner, especially when inventive point is recognized as common sense. Under this provision, examiners will use common sense with caution in the future. 3. Interview This amendment clarifies that examiners may seek to expedite examination procedure by interview, telephone discussion and the like when an application still has defects after response of an Office Action. It is clarified that either the applicant or examiners may initiate an interview at any stage of the substantive examination procedure. It is also clarified that examiners could refuse to interview when opinions of both parties have been fully expressed and relevant facts have been clearly identified. In addition, such interview ways as video conference, email and the like are added in the amendments.
In accordance with the Guidelines for Patent Examination before amended, the applicant could initiate an interview only after the first office action is issued. However, after amended, the applicant could initiate an interview as long as an invention enters substantive examination procedure, and examiners could not refuse the applicant’s interview request unless opinions of both parties have been fully expressed and relevant facts have been clearly identified, so as to expedite the examination procedure.
