Patent rights are granted to "there is no reason for rejecting an application for a patent for invention after substantive examination" and "there is no reason for rejecting an application for a patent for utility model and design after preliminary examination".
What are the prescribed "reasons for refusal"? In Article 53 of the Detailed Rules for the Implementation of the Patent Law, there are specific provisions on this. It includes formal defects and substantive defects in the application documents.
In the process of examination, some defects in the writing of the original patent application documents can be overcome by modification, such as "the claim is not supported by the specification" and "the independent claim lacks the necessary technical features", which can be made up by modifying the claim; However, there are also some defects that cannot be overcome by modification. For example, the manual has the defect of "insufficient disclosure", which cannot be overcome by revision.
Substantial defect refers to the fact that the patent application does not conform to the provisions of the second, third and fourth paragraphs of Article 22 of the Patent Law, that is, the technical scheme mentioned lacks "three characteristics"-"novelty", "creativity" or "practicality".
"Novelty", "creativity" and "practicality" are three important basic concepts in patent law, and most patent administrative litigation cases tried by people's courts involve "novelty", "creativity" or "practicality". Therefore, we must first have a correct understanding of these three basic concepts. Let's briefly explain the "three natures" of patents.
novelty
Article 22 of the Patent Law of China stipulates "novelty" as follows:
Novelty means that before the filing date, no identical invention or utility model was published in publications at home and abroad, used in China or known to the public in other ways, and no identical invention or utility model was filed by others with the patent administration department in the State Council and recorded in the patent application documents published after the filing date.
As far as writing is concerned, the above provisions are not difficult to understand. However, it is not easy to correctly grasp the legal meaning expressed in this passage and how to properly apply this criterion to specific cases. A senior examiner in the German Patent Office once said: "Novelty" is the easiest and most difficult problem in the judgment of "three natures".
In the above definition of novelty, it includes the following three important contents:
1. The criteria for judging novelty are: whether the technical scheme to be protected belongs to the same technical scheme as one of the "existing technologies";
2. The scope of "existing technology" includes: technologies that have been published in domestic and foreign publications before the filing date, and technologies that have been publicly used in China or otherwise known to the public before the filing date ("relative novelty");
3. If another person has the same patent application in China, and its filing date is earlier than an application, but its publication date is later than an application, then the patent application of others can affect the novelty (but not the creativity) of a patent application, which is what we usually call "conflict application".
For the above three contents, there are two problems that need further explanation and explanation.
(1) What is the "same" in "novelty"?
In the third chapter of the second part of the Review Guide formulated by China National Intellectual Property Administration, the "same technical scheme" is explained as follows:
"An application for a patent for invention or utility model under examination is regarded as the same invention or utility model if its technical field, technical problems solved, technical scheme and expected effect are substantially the same as the existing technology or invention or utility model submitted to the Patent Office by others before the application date and published after the application date".
Please pay attention to the words "basically the same". What is "substantially the same"? The review guidelines further explain by giving examples (not exhaustive):
Compared with the subordinate concept, the subordinate concept can destroy the novelty of the subordinate concept (the essence of the subordinate concept is the same as that of the subordinate concept), but the superior concept cannot destroy the novelty of the subordinate concept (for example, the relationship between "metal" and "copper", copper can destroy the novelty of metal, but metal cannot destroy the novelty of copper);
Direct replacement by conventional means is not novel (for example, the scheme of replacing bolts with screws is not novel); and
Different numerical ranges may also affect the novelty (for example, the thickness range of 180-250 mm may destroy the novelty of 100-400 mm).
With the help of the above explanation of the examination guide, we understand that "novelty" in the patent law is not the same as what we usually call "similarity" and "difference". If the two technical solutions are "exactly the same", they are naturally not novel; If the two technical schemes are "not exactly the same", as long as their "technical fields, technical problems solved, technical schemes and expected effects are essentially the same", novelty will also be affected.
It is not difficult to see that it is not accurate to use the word "same" in the second paragraph of Article 22 of the Patent Law of our country to define the "novelty" of a patent, and the examination guide has given it a new meaning.
In order to help us correctly understand the connotation of "novelty" in patent law, we might as well refer to the definition of "novelty" in European and American patent laws.
In Article 102 of the US Patent Law, "novelty" is defined as "the invention is (not) known or used by others in China, and has not been patented or published in domestic and foreign publications";
The definition of "novelty" in the European Patent Convention is: "An invention is considered novel if it does not form part of the existing technology".
In contrast, there are obvious differences between foreign definitions and China's, and "the same" is not taken as the criterion of "novelty".
We can use a simple example to illustrate the difference between the two concepts of "belonging to the existing technology" and "same":
In the prior art, a cup with a cover has been previously disclosed, which consists of a cup body, a cup handle and a cup cover (that is, the cup includes three technical features of A, B and C);
The patented cup has no cover, and only consists of a cup body and a cup handle (the cup includes two technical features: A and B).
Compared with a cup without a cover, a cup with a cover should be "different". However, a cup without a lid is only a part of a cup with a lid. With the publication of The Cup with a Cover, the cup without a cover has always been in public. Therefore, although the cup with cover is different from the cup without cover, we can say that the cup without cover has been "disclosed in the prior art" or that the cup without cover belongs to the category of the prior art, so the cup without cover is not novel.
In order to make the definition of "novelty" in China's patent law more rigorous and accurate, the definition of "novelty" was greatly revised in the third revised draft of the patent law submitted by China National Intellectual Property Administration, and the judgment standard of "same" was changed to "not belonging to the existing technology".
(2) Regarding "other" in item 3 above.
For "conflict application", the regulations in China are also different from those in most foreign countries-"No other person has filed an application with the patent administration department of the State Council for the same invention or utility model and recorded it in the patent application documents published after the filing date", which is unique in China's patent law. Excluding the patent applicant "himself" and "others" means that as long as his previous patent application (for example, an application for utility model) is not made public, it will not affect him from continuing to file other patent applications (for example, an application for a patent for invention) on the application content.
Based on this special provision in the patent law, many applicants in our country often apply for both utility model and invention patent for the same invention and creation for practical benefits. In order to prevent "repeated authorization", the review guide also stipulates that if the applicant's application for a patent for utility model has been granted a patent right in advance, and then his application for a patent for invention wants to obtain a patent right, the applicant must give up the previously obtained patent right for utility model in order to comply with the provisions of Article 13 of the Implementing Rules ("the same invention can only be granted a patent").
At present, the industry has two different understandings of Article 13 of the Detailed Rules:
One view is that "the same invention can only be granted a patent", that is, "the same invention can only be granted a patent once", that is, a patent cannot be granted twice. According to this view, even if the applicant files two patent applications for utility model and invention for the same invention-creation, there can only be one authorization opportunity-once the utility model is granted a patent right, its application for a patent for invention cannot be patented;
Another view is that "only one patent can be granted for the same invention" means "two rights coexist", that is, two patent applications can be granted patents successively, but two patents are not allowed to exist at the same time.
The former view is mainly based on the fact that "second authorization" may lead to "unreasonable extension of patent protection period", but this view lacks relevant legal basis; The latter view is generally accepted by patent applicants and China National Intellectual Property Administration at present, and its legal basis is the provision of novelty in Article 22 of the Patent Law-introducing "others" is a green light for the current operation mode.
I'm afraid the final solution of the above contradictions needs further improvement and revision of the patent law.
(2) Creativity
Article 22 of China's patent law stipulates "creativity" as follows:
Creativity means that compared with the prior art before the filing date, the invention has outstanding substantive features and remarkable progress, and the utility model has substantive features and progress.
What are "outstanding substantive features and remarkable progress" and "substantive features and progress"? What is the relationship between them? What does it have to do with what foreign countries call "non-obviousness"? In the process of operation, this has always been a difficult problem that puzzles everyone.
Chapter IV of Part II of the Review Guidelines explains the "outstanding substantive features" as follows:
"To judge whether an invention has outstanding substantive features is to judge whether the claimed invention is obvious to the technicians in this field relative to the existing technology. If the claimed invention is obvious relative to the prior art, it does not have outstanding substantive features; On the contrary, if the comparison results show that the claimed invention is not obvious compared with the prior art, then the invention has outstanding substantive characteristics. "
It can be seen that the "outstanding substantive features" in China's patent law should be equivalent to the "non-obviousness" in foreign patent laws, but the words are different. Therefore, when judging the "creativity" of an application for a patent for invention, its judgment standard can learn from the foreign judgment standard of "non-obviousness".
In order to facilitate the "creative" judgment, all countries have formulated a set of review principles and judgment standards. It is worth mentioning that the European Patent Office introduced a "problem-scheme" judgment method in the late 1990s. Practice has proved that this judgment method is effective. This method has been accepted by China Patent Office and written into China National Intellectual Property Administration's examination guide, referred to as "three-step method".
The "problem-scheme judgment method" mainly includes the following three steps:
1. Select the closest comparison file from the existing technology, which should belong to the same technical field, have the same or similar invention purpose, that is, the "problems" solved are the same, and contain the most important technical features of the invention.
2. Compare the technical scheme of the claim with the closest comparison document to find out its remarkable technical features. Then analyze these different technical characteristics to see what technical effects they have brought, that is, what technical "problems" have been solved.
3. Judging whether the technical scheme is "creative" from these "problems" and other comparison documents in the prior art.. At this time, it is important to consider whether the existing technology gives the same "technical solution" to solve these "problems" respectively. Through the correlation between "problems" and "schemes", it can be judged whether ordinary technicians in the field can easily think of using the "schemes" in the prior art to solve these "problems", that is, whether these are "obvious" compared with the record group.
Let's further explain the "problem-scheme judgment method" with an example.
situation
The technical problem to be solved by the invention is to prevent the influence of ion rays on an integrated circuit. The technical scheme is that the integrated circuit is encapsulated in epoxy resin, and lead oxide powder is added into the epoxy resin in order to improve the radiation protection ability of the epoxy resin.
Its claim 1 is:
"1. The integrated circuit is sealed in epoxy resin, characterized in that the resin contains lead oxide powder and the thickness of the sealing layer is greater than 2mm. "
There are two related comparison documents in the prior art:
Comparative document A: In order to improve the thermal conductivity of the integrated circuit, aluminum powder or any other inert powder with good thermal conductivity is used in the epoxy resin sealing the integrated circuit, and the thickness of the sealing layer is less than 2mm.
Comparison document B: The circuit board containing integrated circuits is shielded with lead box to prevent the influence of ion rays, and the lead box can also be replaced with a coating containing lead oxide.
First of all, according to the "problem-scheme judgment method" to analyze and judge the above cases:
(1) At first glance, reference document A may be closer to the present invention because its overall structure is similar to the present invention. However, the technical problems to be solved in Comparative Document A are not the same as those in the invention-the former is to improve the heat conduction of integrated circuits, and the latter is to solve the problem of anti-ion radiation of integrated circuits. Therefore, starting from the "problem", the closest comparison document should choose B instead of A. The comparison document B not only relates to the shielding of integrated circuits and the prevention of ion radiation, but also discloses the important technical feature of the invention-using lead oxide as shielding agent.
(2) Comparing the present invention with reference document B, it is not difficult to see that although they have solved the same "problem", they have adopted different technical schemes. Reference document B puts the integrated circuit into a box coated with lead oxide powder, while in the present invention, lead oxide powder is mixed into epoxy resin, and the box is replaced by epoxy resin sealing layer, which is the technical difference between the present invention and reference document B..
(3) On the basis of comparing documents A and B, judge the "non-obviousness" of claim 1 ... When the integrated circuit is exposed to ion rays, how to prevent the influence of particle rays on the integrated circuit is the first "problem" to be solved in this invention. In view of this problem, it is easy for ordinary technicians in this field to retrieve the comparison file B. Although the technical scheme of the comparison file B can solve the problem of radiation protection, it will be an objective new problem to seal the integrated circuit with lead boxes. In this way, "that seal volume is too large" becomes the second "problem" to be sol by ordinary technicians in this field. Starting from this "problem", a person skilled in the art will retrieve the comparison file A. In the comparison file A, a method of sealing an integrated circuit with epoxy resin is disclosed. Obviously, the use of "epoxy resin seal" can reduce the volume, thus solving the second "problem" faced by reference document B.
Because the comparison file B can solve the problem of "radiation protection" and the comparison file A can solve the problem of "too large sealed volume" in the comparison file B, it should be obvious for ordinary people in the field to combine them. The technical scheme after the combination of the two is the technical scheme described in claim 1 of the present invention. Therefore, the invention of claim 1 is not creative.
(3) Practicality
Paragraph 4 of Article 22 of the Patent Law defines "practicality" as:
Practicality means that the invention or utility model can be manufactured or used and can produce positive effects.
China's definition of "practicality" is different. Take the Patent Cooperation Treaty (PCT) as an example. Like most foreign countries, "practicality" is defined as "industrial practicality" in this treaty. "If the claimed invention can be manufactured or used in any industry according to its nature (in the technical sense), it is considered to have industrial applicability". (See paragraph 14.0438+0 in Chapter 14 of PCT Guide to International Retrieval and Preliminary Examination).
In contrast, the definition of "practicality" in China's patent law not only emphasizes that it can be manufactured or used in industry, but also requires that it can produce positive effects.
What is "can produce positive effects"? In practice, many people confuse it with "technological progress" and have a narrow understanding of "technological progress".
For example, someone once filed a request for invalidation of a patent for a "manual rice transplanter". The reason is that there are already mechanical rice transplanters in the prior art. Compared with the mechanical rice transplanter, the manual rice transplanter is a technical retrogression, because it has no positive effect, so it is not "practical".
This is obviously a misunderstanding of "positive effect". As far as work efficiency is concerned, manual rice transplanter may not be as good as mechanical rice transplanter, but it has its unique advantages without external energy. This advantage is also a "positive effect".
Others request that the patent be declared invalid based on the shortcomings of the patent or some adverse consequences after implementation. The reason is that these shortcomings cause the patent to have no "positive effect" and therefore no "practicality". This is also a misunderstanding of "practicality". Any kind of invention has advantages and disadvantages, and "complete imputation" is a wrong interpretation of Article 22, paragraph 4, of the Patent Law that "it can produce positive effects".
In order to eliminate misunderstanding, the Review Guide explains "positive effect" as follows:
"The technical scheme of an application for a patent for invention or utility model shall be able to produce the expected positive effect. The technical scheme of an application for a patent for invention or utility model is obviously useless and divorced from the needs of society, and it is not practical. "
This is actually a dilution of "producing positive effects". When judging whether a patent application is "practical", it mainly depends on whether it can be manufactured or used in any industry, which is a standard generally adopted in the world.
(4) About "ordinary technicians in this field"
"Ordinary technicians in this field" is a very important concept introduced in the patent law. Does not exist in real life, is a fictional person. In the patent law, "ordinary technicians in this field" is regarded as the subject of judging "creativity". In addition, this concept is also applied to the judgment of several other problems. For example, it is also used to judge whether the patent specification is "open and sufficient" and whether a patent is equivalent to infringement. Therefore, it is necessary to have a correct understanding of "ordinary technicians in this field".
Before 200 1, there was a deviation in the interpretation of this concept in the examination guide of China Patent Office, which caused some misleading. Although the explanation of "technical personnel in their respective technical fields" has been corrected in the examination guide of 200 1, there are still many people in the patent field, including the examiners in the patent office, who have misunderstood this, so it is necessary to emphasize and clarify this concept.
In the review guide revised by China Patent Office 1993, the term "technicians in their respective technical fields" is defined as: "Technicians in their respective technical fields are different from examiners, and they are fictional people. He knows all the existing technologies in the technical field to which the invention belongs, and has the general knowledge and ability of ordinary technicians in this technical field. His knowledge changes with time. "
In the above provisions, "technical personnel in the technical field" is defined as "people who know all the existing technologies in the technical field to which the invention belongs". In the popular words of examiners at that time, "ordinary technicians in this field" knew all the existing technologies before the filing date.
At the end of 1990s, there was an invention patent application named "Four-stroke reciprocating piston internal combustion engine with series cylinders", which involved a new type of internal combustion engine-changing the traditional parallel cylinders into series cylinders. The description of the technical scheme in the manual is extremely simple, which only shows the advantages of using series cylinders in the internal combustion engine, but does not explain the difference between the rest of the internal combustion engine and the traditional parallel cylinder internal combustion engine The attached drawing is only a very simple schematic diagram. In the process of substantive examination of the patent application, the substantive examiner rejected the application on the grounds of "lack of publicity", thinking that the new cylinder arrangement of cylinder series will inevitably bring some structural changes to other parts of this internal combustion engine, such as the steam distribution design of the engine, and the applicant should explain these specific technical contents in the specification. After receiving the rejection decision, the applicant shall file a request for reexamination with the Patent Reexamination Board. After examination, the Patent Reexamination Board upheld the original rejection decision.
The applicant refuses to accept the reexamination decision made by the Patent Reexamination Board and brings an administrative lawsuit to the people's court. During the trial in the people's court, the applicant provided a newly retrieved patent document, which proved that technicians could solve the design problem of the steam distribution system of the machine by using the existing technology, so there was no problem of insufficient disclosure of the manual.
After trial, the court of first instance held that because the contents of "insufficient publicity" identified by the Patent Reexamination Board had been recorded in the existing technology before its application date, ordinary technicians in this field could completely use this technology to realize the invention, and there was no problem of "insufficient publicity". Accordingly, the people's court revoked the rejection decision of the Patent Reexamination Board.
The crux of the problem lies in the fact that what the applicant later submitted to the people's court was the patent document published before the filing date. Does the content recorded in this document belong to what ordinary people in the field should know? Or can the patent documents published before the application date be used as the basis for "full disclosure"?
The subject to judge whether the instructions are fully disclosed should be "technical personnel in their technical fields". According to the definition of "technician" in the above review guide, technicians in their technical fields should "know" all the existing technologies before the application date. In this case, although the applicant did not explicitly write the relevant steam distribution problem in the specification, the solution to the steam distribution problem has been made public in the prior art, which should belong to the content that "technicians in the technical field" should know. Now that we know, we don't have to make it public. Therefore, there is no problem of "insufficient disclosure" in the present invention. This may be the basic basis for the people's court to make a judgment.
If the above results are recognized, then any patent application only needs to write those technical contents that are not recorded in the existing technology in its specification, or when describing an invention, all the contents contained in the existing technology disclosed before the application date can be omitted from the patent specification, and it is conceivable how ridiculous the consequences will be.
Article 26 of the Patent Law clearly stipulates: "The specification shall give a clear and complete description of the invention or utility model, which shall be subject to the realization of the technical personnel in the technical field."
In this regard, the review guidelines explain that:
"The technical personnel in the technical field can realize it, which means that the technical personnel in the technical field can realize the technical scheme of the invention or utility model according to the contents recorded in the manual, solve its technical problems and produce the expected technical effect.
The specification shall clearly record the technical scheme of the invention or utility model, describe the specific mode of the invention or utility model in detail, and completely disclose the technical contents necessary for understanding and realizing the invention or utility model, so as to reach the degree that technicians in their technical fields can realize the invention or utility model. "
Obviously, it is wrong to interpret "technical personnel in the technical field" as "people who know all the existing technologies in the technical field to which the invention belongs" and take it as the subject of the judgment instruction "full disclosure".
In the review guide revised by China National Intellectual Property Administration 200 1, the term "technical personnel in their respective technical fields" is redefined and explained:
"Technical personnel in the technical field, also known as technical personnel in this field, refers to the hypothetical person who assumes that he knows all the general technical knowledge of the technical field to which the invention belongs before the application date or priority date, can know all the existing technologies in this field, and has the ability to apply conventional experimental means before that date, but does not have the ability to create. If the technical problems to be solved can prompt the technicians in this field to find technical means in other technical fields, then he should also have the ability to learn relevant existing technologies, general technical knowledge and conventional experimental means from other technical fields before the application date or priority date. "
According to this interpretation, "technical personnel in the technical field" are no longer people who know the existing technology well before the filing date. What it knows is limited to all the general technical knowledge in its technical field. As for other knowledge in the existing technology, including the contents recorded in patent documents, it only has the ability to "know". In the patent specification, if the technical scheme involves some technical contents in the existing technology, the applicant shall write the relevant technical contents into the specification. Even if it is not detailed, at least the source of the technology should be stated so that "technical personnel in the technical field" can "know" the technical content.
The above-mentioned amendments to the Review Guide have fewer words and are not easy to attract people's attention. However, if we don't correct our understanding of this important concept, it will inevitably affect our judgment on some important issues.