Creativity is one of the necessary conditions for granting patents for inventions and utility models, and it is also one of the important rejection defects that patent applicants need to overcome in practice. This paper attempts to explain to readers the methods of identifying and evaluating creativity in patent examination and the common methods of dealing with creativity in practice, combining the relevant provisions in the Guide to Patent Examination and the European Patent Convention.
First, the status quo of creative evaluation of patent claims in China's patent examination
Creativity is one of the three attributes that inventions and utility models granted patent rights must possess as stipulated in Article 22 of the Patent Law. Creativity is defined in this Law as inventions and utility models that have been granted patent rights. Compared with the existing technology, it should have outstanding substantive characteristics and remarkable progress. Existing technology refers to the technology known to the public at home and abroad before the application date of invention or utility model.
China's patent law has been revised three times since it was implemented in April 1985, but none of the revised clauses involves Article 22 of the patent law, in other words, the creative provisions of patent claims have not changed in the past 30 years; However, in the course of 30 years' legal practice, neither China National Intellectual Property Administration nor patent applicants have a fixed understanding of this law. With the rapid growth of patent applications in China year by year, China National Intellectual Property Administration, as a patent examination department, also has some inconsistent standards for creative evaluation methods, as follows:
1. 1 Applicability of comparison documents
According to the provisions of Chapter 4 of Part II of the current Patent Examination Guide, when determining the existing technology that is closest to the invention-creation, the existing technology that is the same as or similar to the claimed invention technology field should be considered first; Secondly, consider the existing technology in other fields; The definition of "closest to the prior art" is the prior art in the same technical field as the claimed invention, and the technical problem, technical effect or use to be solved is the invention with the closest and/or the most technical characteristics.
As can be seen from the above provisions, choosing the closest existing technology is the key to evaluate the creativity of patent claims. If the closest existing technology is wrongly applied, it will directly lead to the loss of objectivity in creative evaluation, and draw a conclusion that the technical development trend of its technical field is different or even contrary to it, thus ignoring the contribution of the invention to the existing technology. Especially when determining whether the technical problems to be solved by the existing technology and the invention are the same, because one or several technical means closest to the existing technology in the comparison file are similar to the invention, the examiner can easily ignore whether the technical problems solved by the two are the same. If such a comparison document is considered to be the closest prior art to the present invention, the above objectivity problem will inevitably arise.
1.2 Other problems that are easy to occur in creative evaluation
In the current creative evaluation, in addition to the applicability of the above-mentioned comparative documents, there are also problems such as subjective technical problem identification, technical feature extraction and technical feature generalization. Specifically, in the process of comparing the closest existing technology with the invention, we deviate from the actual disclosure content of the comparison document and look for the corresponding technical features in the comparison document according to the technical means in the invention, instead of considering whether the comparison document and the technical scheme of the invention are the same as a whole. For example, whether there are differences between the two in the purpose and technical effect of the invention, and whether the comparison document also contains technical features that the invention does not. These technical features, like those not included in the comparison file in the present invention, should be regarded as the distinguishing technical features between the present invention and the comparison file, and whether the technical problems re-determined according to the distinguishing technical features are appropriate or not. In practice, in order to correspond to the technical features of the invention, even some technical means and technical problems in the comparison document have been summarized. This way undoubtedly subjectively expands the scope of the disclosure of comparative documents, and in fact loses the objectivity of creative evaluation.
On the other hand, according to the provisions of Chapter 4, Part II of the current Patent Examination Guide, if the distinguishing technical features between the invention and the closest prior art are enlightening in the prior art, the claimed invention is obvious to those skilled in the art.. Whether it constitutes enlightenment or not, including the distinguishing technical features, is common technical means or common knowledge in this field, or the distinguishing technical features are disclosed as prior art by other comparison documents. In practice, when determining whether the technical feature closest to the difference between existing technology and invention is disclosed as existing technology by other comparison documents, we often simply compare this technical feature with one or several technical features in other comparison documents, and consider whether the corresponding technical features in other comparison documents play the same role in the scheme. Few factors are considered, such as the correlation between other comparison documents and the closest prior art, the adaptability of technical features in other comparison documents to the closest prior art, and whether the technicians in this field have the motivation to combine the closest prior art with other comparison documents.
As to whether the distinguishing technical feature is common knowledge, there are two cases to judge whether the distinguishing technical feature is common knowledge according to the provisions of Chapter 4 of Part II of the current Patent Examination Guide. One is to explain that the distinguishing technical features belong to the common technical means in this field through reasoning, and the other is to present evidence to prove that the distinguishing technical features have been disclosed in textbooks or tool books. However, in practice, when the distinguishing technical feature is considered as common knowledge in this field, the distinguishing technical feature is basically determined by reasoning as a common technical means in this field, and it is rare to produce evidence of common knowledge such as textbooks or reference books. Compared with the latter proof method, the objectivity of the former reasoning method is obviously weak and it is easy to ignore the key improvement points of the invention. Therefore, in the current practice of patent examination, it is often because of the lack of objectivity in the evaluation of different technical characteristics that it is wise after the event.
1.3 Common reply strategies of patent applicants
For patent applicants, due to the subjectivity of retrieval and the limitation of resources, creative defects are also one of the common defects in current practice. In view of the lack of creativity, generally speaking, the creativity of the invention is analyzed and discussed according to the three-step method stipulated in Chapter 4 of Part II of the current Patent Examination Guide, and the claim is amended when necessary to distinguish it from the nearest existing technology;
In addition, when comparing the evaluation of creativity by the record group, the applicant will also confirm the actual contents of the comparison documents, and consider whether these contents are related, whether the technical field of the comparison documents is the same as that of the invention, whether the comparison documents can be directly superimposed, whether the technical scheme of the invention can be directly formed after superposition, and whether there is the possibility of mutual exclusion between them. Then comprehensively consider whether the invention is obvious. In other words, compared with the drastic creative evaluation, the patent applicant's creative defense strategy pays more attention to details. In today's era when all kinds of documents are flying all over the sky, the difference in the details of the invention technical scheme has gradually become the key factor for whether the patent can finally be authorized.
Second, the evaluation mechanism of the European Patent Organization (EPC) on the creativity of the claim
Article 56 of the European Patent Convention stipulates that if an invention is not obvious to a person skilled in the art relative to the existing technical level, it shall be regarded as creative; In other words, the creativity stipulated in the European patent convention focuses on whether the invention is obvious to the technicians in this field, and whether the invention has technological progress is not a necessary condition for considering creativity.
In the European Patent Convention, the method of "problems and solutions" is mainly used to identify creativity. In addition, technical deviation, file age (time factor), long-term eager technical demand, commercial success, market competitors, simple solutions and unexpected technical effects are also auxiliary factors for creative identification. For "problems and solutions", that is, to determine the closest existing technology and the objective technical problems to be solved by the invention, consider whether the invention is obvious to the technicians in this field from the closest existing technology and objective technical problems; That is to say, the creative evaluation method adopted by the European Patent Organization (EPC) is actually similar to the "three-step method" stipulated in the fourth chapter of the second part of China's current examination guide, but the outstanding substantive characteristics and remarkable progress of creativity stipulated in the third paragraph of Article 22 of China's Patent Law, that is, the invisibility of inventions and technological progress, belong to the scope of creative consideration. Moreover, the fourth chapter of the second part of the current review guide in China also stipulates that in some technical schemes of inventions, unexpected technical effects can bring creativity to inventions, so in the creative evaluation of patents in China, more attention is paid to technological progress to some extent. However, whether it is non-obvious or combined with technological progress, the evaluation of invention creativity depends on the openness of existing technology. In other words, searching the existing technology is of great significance for patent application, patent examination, patent invalidation and creative identification in patent administrative litigation.
It can be seen that both European patent organizations and China's current patent examination system have formed a complete set of examination standards and procedures for creative examination, but when it comes to different technologies in various fields, it is easy to mix some subjective judgments, which has a certain impact on the consistency of the standards for creative examination. However, as mentioned in the definition of creativity in China Patent Law, we can see that creativity itself is a vague concept. Because of its outstanding substantive characteristics and remarkable progress, it is bound to need more judicial practice to provide more evidence for creative evaluation, and then improve many details in the process of creative identification; This makes the criteria for identifying creativity in patent application, invalidation and administrative litigation tend to be consistent.
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