The recently updated Patent Examination Guidelines in 2023 took effect on January 20, 2024. This article aims to outline the key revisions concerning inventiveness within the Patent Examination Guidelines.
1. The examination on obvious inventiveness of utility model
The updated Patent Examination Guidelines provide clarification regarding the preliminary examination of utility models. They specify that examiners should examine whether the utility model application obviously lacks inventiveness. Furthermore, it is clarified that the principle guiding the inventiveness examination of utility models during preliminary examination aligns with that of the inventiveness examination during the invalidation procedure for utility models.
2. The examination principle of dependent claims
Before the revision, when an independent claim possesses inventiveness, it was stipulated that "the inventiveness of the dependent claim of the independent claim will not be examined again." However, the revised Patent Examination Guidelines now stipulate that "the inventiveness of the dependent claim of the independent claim will not be examined generally." This revision was made because in cases where the technical solution of the dependent claim cannot enjoy priority, the dependent claim might not possess inventiveness, even if its independent claim does, due to the re-determination of the filing date of the technical solution.
3. The examination criteria of inventiveness of invention
(1) Determining the closest prior art
In the revision of the Patent Examination Guidelines, it's clarified that the closest prior art serves as the basis for determining whether an invention possesses prominent substantive features. Specifically, "the prior art related to the technical problem to be addressed by the invention is given priority". Consequently, according to the revised Guidelines, when selecting the closest prior art, priority must be given to prior art within the same or similar technical field and related to the technical problem addressed by the invention. This means that apart from considering identical or similar technical fields, it's also necessary to consider whether the purpose of the invention is technically linked. For instance, if the technical problem explicitly stated in the prior art matches or resembles the technical problem addressed in the current application, or if, though not explicitly recorded, it's implicitly recognized by those skilled in the art, it should be considered. By enhancing the basis for assessing inventiveness, the risk of "Ex Post Facto Analysis" by examiners during the examination process can be avoided as much as possible.
(2) Redetermining the technical problems actually solved by the invention.
In the course of invention examination, it's possible that the technical problem actually addressed by the invention differs from the one recorded in the description, based on the closest prior art identified by the examiner. The principle for redetermining the technical problem actually solved by the invention was outlined in the Patent Examination Guidelines prior to the revision. It stated that "any technical effect of the invention can serve as the basis for redetermining the technical problem, as long as those skilled in the art can derive the technical effect from the contents described in the application". However, as this principle didn't specify how to judge the technical problems actually solved by a technical solution with equivalent technical effects and no "superior technical effect", the revised Patent Examination Guidelines now clarify this as a special case. It states that "when all technical effects of the invention are equivalent to the closest prior art, the re-determined technical problem is to provide an alternative technical solution different from the closest prior art." Furthermore, additional considerations are provided when redetermining technical problems. It's emphasized that the re-determined technical problems should align with the technical effects achievable by the distinguishing features of the invention. They should not be identified as the distinguishing features themselves, nor should they include guidance or hints regarding the distinguishing features.
(3) Types of common knowledge evidence
In the section IV (Reexamination and Invalidation Proceedings) of the Patent Examination Guidelines, "technical dictionaries and technical manuals" have been included as types of common knowledge evidence. These resources have been added to the list of common knowledge evidence in the substantive examination of part II of the revised Patent Examination Guidelines.
From the information provided, it is evident that the newly revised Patent Examination Guidelines enhance the examination rules concerning inventiveness and related aspects. These revisions are beneficial for standardizing examination criteria, enhancing the quality of examinations, and ensuring proper protection for inventions-creations that genuinely contribute to the prior art.
