Bewilderment in Judging Inventiveness

By Gong Jianhua,[Patent]

Article 22 (3) of the Patent Law prescribes: “Inventiveness means that, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents notable progress, and that the utility model has substantive features and represents progress. ”

This paper will focus mainly on the “Inventiveness” of an invention rather than on the “utility model”. It is obvious that in judging the “inventiveness” of an invention, two elements have to be considered: its prominent substantive features and notable progress.

I.  Lack of clarity in the judgment of “prominent substantive features”
“Prominent substantive features” refers to what we mean by “non-obviousness”. Under the Guidelines for Examination (the Guidelines) three steps are required to make the judgment on the technical solution sought to be protected to see whether it has obviousness comparing with the prior art, basically: 
i) to establish the proximate prior art;
ii) to establish the distinctive features of the invention and the technology issue to be solved;
iii) to make judgment on whether the invention seeking to be protected has obviousness to those skilled in the art.

     “Proximate prior art” in the first step refers to the technical solution in the prior art closest to the invention sought to be protected. Usually we use one comparative document to show the prior art instead of using two or more. The distinctive features in the second step does not put any limitation on quantity. Among the three steps, the first and second are easy to conduct but the third, the most pivotal, is problematic. To make the third step more easily operational, the Guidelines introduce the notion of “technology revelation”, saying that “ what has to be established is whether the prior art has some technology revelation as a whole, that is, whether the prior art shows the technology revelation--the technology required to solve the practical problems--which will arouse the motivation of those skilled in the art to improve the proximate prior art and thus will obtain protection when the distinctive features are applied to the proximate prior art to solve the existing technological problems. ”

These statements show us that the judgment of obviousness has now become a judgment of “technology revelation”. If the prior art has “technology revelation”, the invention seeking protection is obvious,otherwise it is considered non-obvious.

Then under what circumstances does technology revelation subsist in the prior art? In other words, under what conditions is the technology seeking to be patented obvious, i.e. non-inventive? The Guidelines provide three conditions where technology revelation exists: i) the relevant distinctive feature is common knowledge; ii) the relevant distinctive feature exists in the other solutions of the proximate prior art and the relevant invention functions the same in the prior art as that in this invention; iii) the distinctive feature exists in another comparative document and has the same function as that in the prior art.

Admittedly, the Guidelines for Examination ultimately try to be concrete and objective in the judgment of inventiveness, an issue involving great subjectivity.  

To conclude, as to the prominent substantive features, the Guidelines present us with three types of evidential combinations for making judgment on the non-inventiveness of a technical solution:
i) a comparative document and a known technology;
ii) two plans in one comparative document;and
iii) two comparative documents .

However, as stated above, the invention has more than one distinctive features from the approximate prior art. When the distinctive features are published in another two respective comparative documents or partially in other documents and the other distinctive features involve a known technology, the examiner will have to face the following two common phenomena in the judgment of inventiveness:
i) three comparative documents
ii) two comparative documents and a known technology

Then, practice is separated from theory--the practical modus operandi found no support in the Guidelines. When this occurs, the examiner as usual, will, in the notice, conduct a detailed comparison of the features, and list a number of comparative documents, but when the applicant defends it and makes some contention, the examiner will grant the patent intact, which brings about unfairness in the execution of the law, especially to those domestic applicants who make no defense and only make modifications to the application. As a result it will tend to be treated as a withdrawal of the application or the narrowing scope of the claim. 

II. Easily confused concepts in the judgment of “notable progress”
From the definition of inventiveness in the Patent Law it can be seen that a technology can only be inventive if it bears both prominent substantive features and notable progress. The notable progress is usually shown in the form of the “effect” of the invention. As to the term “effective result”, it can be found in the chapter concerning inventiveness several times, and one reference is used to explain the notion of notable progress as “the useful technological effective result”. The Guidelines interpret the useful “effect”, that is, notable progress of an invention as: 
- an invention has a better effect than the prior art;
- an invention has a technical solution involving a totally different concept, which has a similar effective result to the prior art; and
- an invention represents a new trend of technology development;
- Though there may be some negative effect, an invention has an obvious positive effect in other aspects.

The above explanation weakens the concept of “notable progress” which is shown by the effective result to a large extent. By and large, while judging inventiveness according to the Guidelines for Examination, it is not necessary to insist that its effective result involves notable progress as long as one point of the technology bears prominent substantive features for a few technologies while its prominent substantive features does not meet one of the above effective results.
Therefore, two factors in the judgment of inventiveness, prominent substantive features and notable progress, involve a greatly unbalanced weight. As time passes, the examiner will overlook the notable progress, a secondary element, which causes confusion in the judgment, i.e. in substance, notable progress is just a nominal element in practice, though in theory it ought to be considered.

In addition, the concept of “effect” appears in several places in the chapter dealing with inventiveness, i.e. in §4 the description of a “judgment of several different types of inventiveness” and in §5, “other factors in the judgment of invention” it is shown in the expression of “unexpected technical effect”. In §4, the judgment of inventions, whether you obtain the unexpected technical effect is the key factor in deciding inventiveness with respect to inventions by selection, inventions by diversion, and inventions by changing elements. In §5, in deciding other factors to be considered in the judgment of inventiveness, the Guidelines state that an examiner will treat it as inventive if an application is within one of the four following categories:
i) an invention solving long unsettled technical problems;
ii) an invention overcoming technical bias;
iii) an invention having an unexpected technical effect; or
iv) an invention obtaining a commercial success.

The “unexpected technical effect” is presented here.

Since in the description of inventiveness, notable progress is shown in the effect of the technology, and as we have seen at the beginning of Article 22 (3) of Patent Law,the definition of inventiveness states that inventiveness differs from a utility model to the extent of notability. Thus, in determining inventiveness, the “useful technical effect” and the “unexpected technical effect” arise simultaneously, and it will be taken for granted that notable progress refers to the latter, as only “unexpectedness” can match with “notability”. However, “usefulness” is by all appearances excessively weak, and does not arise to the same level as the concept of “notability”.

As above mentioned, in the definition of inventiveness, prominent substantive features and a notable progress are related with the conjunction “and”, therefore, only an invention which meets the above requirements, and contains elements of prominent substantive features and notable progress, can be considered inventive. On the contrary, if one of the elements is not satisfied, the invention cannot be proved. Once the confusion with the concept of effect arises, the examiner in judging the inventiveness will only turn his attention to the notable progress rather than the prominent substantive features. That is to say, inventiveness of the invention is established without finding any unexpected technical effect of the invention in the content of its specification.

With further training, examiners should have a clear understanding of the Patent Law, its Detailed Rules, and the concepts contained in the Guidelines. However, if conflicts are avoided at the time when legal documents are drafted, for instance, deleting the confusing definition “notable progress” in inventiveness from Article 22(3) of Patent Law, it may settle the problem of the inconsistency between theory and practice caused by the unbalanced weight given the two elements in the judgment of inventiveness. Meanwhile, the confusion with respect to the meaning of progressive “effects” can be eliminated, and thus, the judgment of inventiveness will be much clearer.

Gong Jianhua is an examiner of Material Engineering Examination Department, State Intellectual Property Office.

(Translated by Wang Liping)     

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