July 2023
Yanting Pei and Teresa Huang
According to the statistics of the State Intellectual Property Office in March 2023, as of the end of February 2023, the effective invention patents in China amounted to 4,267,000. Among them, the effective domestic (excluding Hong Kong, Macao and Taiwan) invention patents was 3.334 million. The effective utility model patents was 11.0 million. The effective design patents was 2.876 million.[1] In 2021, China’s effective invention patent was 3,597,000[2], and more than 90%[3] of them were service inventions. Hence, it’s evident that enterprises have been attaching more and more importance to patents. But at the same time, the State Council issued the National Intellectual Property Protection and Utilization Plan (GF [2021] No. 20) under the “14th Five-Year” pointed out that intellectual property rights in China are still faced with a lot of problems and shortcomings: There is a shortage of high-quality intellectual property creation in key core technology; intellectual property infringement is frequent and easy to occur; it is still difficult to protect intellectual property rights; the effectiveness of intellectual property transfer and transformation needs to be improved; the role of the intellectual property system in promoting high-quality economic and social development needs to be further enhanced. The author believes that in order to enhance the economic benefits of patents for companies, it is crucial for businesses to improve the quality of patent applications. Specifically, the stability of granted patents’ rights should be ensured, reducing the likelihood of them being easily invalidated; In terms of enhancing the competitiveness of enterprises through patents, it is necessary for companies to strategically layout and apply for patent technologies from an overall perspective. How can we achieve these two goals? From the legal point of view (this paper only takes inventions and utility models as an example; unless otherwise specified in the following text, the patents solely refer to invention and utility model patents.): First, it is necessary to clarify the scope of patent protection; second, it is important to ensure that the invention or creation being applied for meets the requirements of novelty, creativity and practicality; additionally, it’s essential to make effective use of the doctrine of equivalents for patent infringement determination, so that it is beneficial to the technology strategy planning when filing for patents.
I. How to Determine the Scope of Protection of Patent Rights
When applying for an invention or utility model patent, one should submit documents such as a request letter, specification with abstract, and claims according to Article 26 of the Patent Law. In this regard, the specification should provide a clear and complete description of the invention or utility model, while the claims should be based on the specification and clearly and concisely define the scope of patent protection sought. That is to say, in terms of fundamental legal provisions, the scope of patent protection for an invention or creation is primarily determined based on the content of the claims, and clear claims generally define the scope of patent rights. Unclear claims are often prone to causing the patent right to be declared invalid. According to Article 65 of the Enforcement Regulations of the Patent Law, if the invention or creation for which a patent has been granted eventually cannot meet the requirements of Article 26(4) of the Patent Law (that is, the claimed subject matter lacks clarity), it may be declared invalid upon request.
But is the claim the only basis for judging the scope of protection of the patent right? The answer is of course negative. Although the claim is the direct basis for determining the scope of protection of the patent right, but in judicial practice, the court will still refer to the specification, drawings, patent examination files, other patents and the patent in question and the relationship between the patent in question and the patent examination files, the effective patent authorization decision, as well as tools, textbooks, etc., to determine the scope of the claim[4].
In this, the patent examination file includes the written materials submitted by the patent applicant or the patentee in the patent examination, reexamination and invalidation procedures, the notice of examination opinion produced by the patent administrative department under the State Council, the record of the meeting, the record of the oral hearing, the effective decision of examination of the request for review of the patent reexamination, and the decision of examination of the request for the declaration of invalidity of the patent right, and so on.
In addition, in terms of the order of interpretation, according to Article 3 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Cases of Disputes over Infringement of Patent Rights (hereinafter referred to as Judicial Interpretation No. 1), the court will firstly refer to the specification, the accompanying drawings as well as the examination file, and if these methods still cannot help to clarify the meaning of the claims, the court may interpret them in conjunction with the publicly available literature, such as tools and textbooks, as well as with the usual understanding of people of ordinary skill in the field. The court may interpret the claims in the light of publicly known literature such as tool books, textbooks, and the ordinary understanding of the technical people in the field.
It is worth noting that according to Article 5 of Judicial Interpretation I, if a technical solution is only described in the specification or drawings but not included in the claims, the people’s court will not support the patentee in including it within the scope of patent protection in a patent infringement dispute. In addition, Article 6 of the Interpretation specifies that if a patent applicant or patentee abandons a technical solution through amendment or statement during the process of patent authorization or invalidation declaration, and later includes it within the scope of patent protection in a patent infringement dispute, the people’s court shall not support it. In other words, while the specification is considered when determining the scope of the claims, any technical solutions not included in the claims as published in the specification will not be considered within the scope of patent protection.
In addition, according to Article 69 of the Enforcement Regulations of the Patent Law, during the examination of the invalidation request, the patentee of an invention or utility model patent may amend its claims, but the scope of protection of the original patent must not be broadened. Furthermore, the patentee of an invention or utility model patent may not amend the patent specification and accompanying drawings.
Practical Advice:
In view of this, in order to clarify the extent of patent protection, it is essential to provide a very clear and precise description and definition of the technical solution that needs to be protected in the claims of the patent application, avoiding ambiguous language, non-standard expressions, and punctuation that may cause confusion; secondly, the technical solutions should be explained as clearly as possible in the specification and the accompanying drawings. Again, it is also important to ensure that the scope of the technology described in the specification and the claims of the patent are consistent. It is advisable to seek the assistance of professionals to create a well-written solution in order to reduce the risk of future invalidity or infringement.
II. How to Judge the Novelty, Creativity and Practicality of a Patent?
To be granted a patent, it’s essential to submit documents such as application form, specification with abstract, and claims that clearly define the scope of the claims, while the requirements for novelty, creativity, and utility of patents must be met.
(I) Novelty
According to Article 22 of the Patent Law, novelty means that the invention or utility model is not a prior art, and no entity or individual has filed an application with the State Intellectual Property Office for the same invention or utility model before the filing date, as recorded in the patent application documents published or announced after the filing date.
That is, two conditions need to be met to satisfy the novelty requirement:
1. It is not a prior art;
2. There is no other identical application before the filing date and such application is published after the filing date (i.e., no conflicting application)
The “prior art”, according to Article 22 of the Patent Law, refers to the technology known to the public at home and abroad before the date of filing. Specifically, according to 2.1.2 of the Patent Examination Guidelines, prior art can be disclosed in three ways: Publication, use and disclosure by other means, and there are no geographical restrictions. Of course, the Patent Examination Guidelines also point out that if the prior art is kept secret it is not a technology that is known to the public. Nor will such disclosure result in a loss of novelty under Article 24 of the Patent Law if the technical solution is disclosed within six months prior to the filing date (i.e., the grace period for novelty) in the following manner: 1) When a state of national emergency or extraordinary circumstances arises, it is disclosed for the first time for public interest purposes; 2) It is exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government; 3) It’s first published at a prescribed academic or technical meeting; 4) Others disclose its contents without the consent of the applicant.
According to Article 28 of the Patent Law, the “filing date” generally refers to the date on which the patent application document is received by the patent administration under the State Council, except for the special circumstances such as unacceptable materials submitted, the need to supplement drawings and priority.[5]
On the other hand, according to Article 11 of the Enforcement Regulations of the Patent Law, except in special statutory circumstances, the filing date referred to in the Patent Law, where there is a priority, refers to the priority date. According to Article 29 of the Patent Law, priority dates fall into foreign priority dates and domestic priority dates. Foreign priority date means that, within twelve months from the date on which the applicant for invention or utility model first filed an application in a foreign country for a patent on the same subject matter in China, the applicant may enjoy priority rights in accordance with the agreement concluded between that foreign country and China or the international treaty to which both countries are parties, or in accordance with the principle of mutual recognition of priority rights. Domestic priority date means that any applicant who, within twelve months from the date on which he/she first filed an application for a patent for invention or utility model in China, files another application for a patent on the same subject matter with the patent administration under the State Council may enjoy the right of priority.
And when evaluating the novelty of inventions and utility models, according to the Patent Examination Guidelines, two main principles are followed:
When evaluating the novelty of inventions and utility models, according to the Patent Examination Guidelines, two principles should be followed:
1. The same invention or utility model
If the technical solution limited by the claims of the patent application is substantially the same as the technical disposal disclosed in the comparative document compared with the content disclosed in the comparative document, and a person skilled in the art can determine that the two can be applied to the same technical field, solve the same technical problem, and have the same expected effect based on the technical solutions of the two, they will be considered the same invention or utility model.
2. Individual comparison
When determining the novelty, the claims of the invention or utility model application will be compared by the examiner with each prior art or the relevant technical content of the invention or utility model published or announced later, and will not be compared with several prior art or the combination of the invention or utility model published or announced later, or the combination of technical solutions of a comparative document (this is different from the combination of technical solutions in a comparative document). It will not be compared with several prior art or combinations of inventions or utility models published or announced later in the application, or with combinations of several technical solutions in a comparative document (which is different from the method of judging the creativity of an invention or utility model application).
Practical Advice:
It can be seen that in the judgment of novelty, the time advancement of the technical solution of the patent application is stringently required, and in practice, most patent infringement disputes are often rendered ineffective in achieving their expected outcomes due to the opponent’s claim that the sued patent technology lacks novelty, resulting in the patent being invalidated. Therefore, it is recommended that enterprises conduct a comprehensive technology search before investing in technology, to ensure that the proposed technical solution does not fall within the scope of existing technologies, in order to fully leverage the technological barrier effect of patents. In addition, for patent rights, whether it is the application or subsequent maintenance, the filing date is a very important time point. It is recommended to keep the relevant files as evidence of the retention period in practice, and to pay attention to utilizing priority to ensure the timeliness of the filing date.
(II) Creativity
According to Article 22 of the Patent Law, creativity refers to the outstanding substantial features and significant progress of an invention compared to the prior art. This utility model has substantial characteristics and advancements.
That is to say, for inventions, meeting the creative requirements entails meeting the following two criteria:
1. Outstanding substantive features
2. Significant progress
According to the Patent Examination Guidelines, the so-called “outstanding substantive features” means that the invention is non-obvious to a person skilled in the art to which it belongs in relation to the prior art. If the invention can be obtained by a person skilled in the art on the basis of the prior art only through logical analysis, reasoning or limited experimentation, the invention is obvious and does not have outstanding substantive features.
According to the Patent Examination Guidelines, the invention with significant substantive features refers to the fact that the invention is not obvious to a person skilled in the art, compared to the prior art. If an invention is something that can be obtained by the persons skilled in the art in the relevant field solely through logical analysis, reasoning, or limited experiments based on prior art, it is considered obvious and does not possess outstanding substantive features.
In determining whether a technical solution is “obvious”, the examiner generally follows the following three steps:
(1) Identify the closest prior art
(2) Identify the distinguishing features of the invention and the technical problem it actually solves
(3) Assess whether the invention to be protected is obvious to those skilled in the field.
According to the Patent Examination Guidelines, the “significant progress” refers to an invention that can produce beneficial technical effects compared to the prior art. For example, the invention overcomes the shortcomings and deficiencies of the prior art, or alternatively, it provides a different conceptual technical solution to solve a particular technical problem, or represents a new trend in technological development.
In evaluating whether an invention is a significant advance, the examiner primarily considers whether the invention offers beneficial technical effects. In the following cases, the invention should normally be considered to have beneficial technical effects and represent a significant progress:
(1) The invention offers better technical effects compared with the prior art, for example, improved quality, higher yield, energy conservation, environmental pollution control, etc.;
(2) The invention provides a technical solution with a different technical idea, and its technical effect can basically reach the level of the prior art;
(3) The invention represents the development trend of a new technology;
(4) Although the invention has negative effects in some aspects, it has clearly positive technical effects in other aspects.
According to the Patent Examination Guidelines, when evaluating whether an invention is inventive, the examiner shall not only consider the technical solution of the invention itself, but also consider the technical field of the invention, the technical problem solved and the technical effect produced, and treat the invention as a whole. In contrast to the principle of individual comparison for novelty, the examiner will evaluate the invention claiming protection by combining different technical elements from one or more copies of prior art. On the other hand, if an independent claim is creative, the creativity of the dependent claims of that independent claim is no longer examined. Furthermore, an invention is more likely to be recognized as creative if it can satisfy conditions such as the following:
(1) The invention solves a technical problem that people have been longing to solve, but have not been able to succeed in doing so
(2) The invention overcomes technical prejudices
(3) The invention achieves an unexpected technical effect
(4) The invention is commercially successful
Practical Advice:
In view of this, enterprises can also utilize prior art to explore new technology based on the above benchmarks of the examiner’s evaluation of creativity when conducting R&D. For example, the R&D personnel of an enterprise can improve or overcome the technical shortcomings or technical problems found in the published existing patent documents when conducting research and development, and at the same time, they can achieve outstanding substantive characteristics and remarkable progress in technology. The patented technology applied in this way can not only ensure that it meets the authorization conditions, but also make the research and development of enterprises get twice the result with half the effort.
(III) Practicality
According to Article 22 of the Patent Law, practicality means that the invention or utility model can be manufactured or used and can produce positive effects.
According to the Patent Examination Guidelines, the statement “can be manufactured or used” means that the technical solution of the invention or utility model can probably be manufactured or used in the industry. A technical solution that meets the requirement for practicality cannot be contrary to the laws of nature and should be reproducible. The lack of practicality due to the inability to be manufactured or used is caused by the inherent defects of the technical solution itself, and has nothing to do with the degree of disclosure of the specification.
According to the Patent Examination Guidelines, the following are several scenarios that lack practicality:
(1) No reproducibility
Reproducibility refers to the ability of a person skilled in the art to reproduce the technical solution adopted in the patent application to solve the technical problem based on the disclosed technical content. Such repeated implementation shall not depend on any random factor, and the implementation results should be the same. In addition, it is worth noting that the low yield of an invention or utility model product is fundamentally different from the non-reproducibility of the product. The low yield of the finished product can still be repeated, but the implementation process fails to ensure certain technical conditions (such as environmental cleanliness, temperature, etc.), which results in low yield; that is, the finished product yield is low but still reproducible. The non-reproducibility of the product of the invention or utility model means that under the condition of ensuring all the technical conditions required, it is still impossible for the persons skilled in the art to repeatedly achieve the result required by the technical solution.
(2) Contrary to the laws of nature
An invention or utility model that is contrary to the laws of nature, e.g., the law of conservation of energy, is not practicable.
(3) Products utilizing unique natural conditions
Only products that are immovable from beginning to end and built to take advantage of specific natural conditions are not practical.
(4) Surgical methods for non-therapeutic purposes in human or animal bodies
Surgical methods for non-therapeutic purposes cannot be utilized industrially because they are performed on living human beings or animals. In addition, it is worth noting that surgical methods for therapeutic purposes are objects for which patents are not granted.
(5) Methods for measuring physiological parameters of human or animal bodies under extreme conditions
Measurement of physiological parameters of human or animal bodies under extreme conditions requires the subject to be placed in an extreme environment, which poses a threat to the life of the human or animal. Such methods cannot be used industrially, so they are not practical.
(6) No positive effects
According to the Patent Examination Guidelines, the “positive effects” refer to the economic, technical and social effects of an invention or utility model patent application on the date of filing can be expected by a person skilled in the art. These effects should be positive and beneficial. The technical solution of an invention or utility model patent application that is obviously useless and divorced from the needs of society is not practical. The examiner generally adheres to the following principles when examining the practicality of an invention or utility model patent application:
(1) Based on the overall technical content disclosed in the specification (including accompanying drawings) and claims filed on the date of filing, and not only limited to the content recorded in the claims;
(2) Utility has nothing to do with how the invention or utility model applied for was created or whether it has been practiced.
Practical Advice:
As stated above, the technical solution of an invention or utility model patent application that is obviously unhelpful and out of social need will not be considered to have practicality. Therefore, it also reminds enterprises to be more targeted in R&D and save resources.
III. Is obtaining patent authorization a patent layout?
As can be seen from the above, obtaining patent authorization is not a particularly easy thing, so shall enterprises just focus on the goal of obtaining authorization? The answer is naturally no. Although the state encourages enterprises to carry out scientific and technological innovation, it does not encourage enterprises to focus only on the number of patents[6], nor does it encourage all kinds of abnormal patent application behaviors that do not aim at protecting innovation. Measures on Regulating Patent Application issued by the State Intellectual Property Office proposes to resolutely crack down on the behavior of “submitting various types of patent applications, acting as a patent application agent, transferring the right to apply for patents or patent rights, etc., either individually or in collusion with each other, without aiming at protecting innovation and based on real inventive and creative activities, and in order to obtain undue benefits or fictitious innovation performance or service performance.” The Outline for Building a Power of Intellectual Property (2021-2035) also points out that what the State wants to build is a power of intellectual property with Chinese characteristics and at the world level, which will stimulate the vitality of innovation in society through its intellectual property strategy and provide a solid guarantee for the building of an innovative state and a great modern socialist country. As a matter of fact, China’s encouragement of genuine technological innovation can also be seen from the fact that the Science and Technology Innovation Board require applicants to have a certain number of invention patents[7] that generate income for their main business.
Therefore, what enterprises should really focus on is how to carry out technological innovation and enhance their technological competitiveness, rather than merely obtaining authorization. In that process, considering the patentability of a particular technology in isolation does not help much in building competitive barriers for a company. This is particularly true in the judgment of patent infringement; according to the current principle of “substantial similarity”[8], similar technical solutions with one technical feature missing will probably not be recognized as falling within the scope of protection of the patent right, and thus it is easy for competitors to bypass the patent barrier.
Therefore, when an enterprise seeks a patent planning, it should firstly consider from the overall perspective what the commercial purpose of the technical solution is to be realized ultimately, what alternatives will be available in this process of realization, and whether these alternatives can be avoided through patent application, and how the commercial purpose can be protected through patent. In brief, enterprises can combine product design, business objectives, “exclusivity”, geography, market cycle, relationship with technical secrets, release of new products, competitors’ situation and other elements, and carry out hierarchical and combinatorial patent application and arrangement from the strategic perspective of “shifting from the whole to the local level, from correlation factor 1 to correlation factor N, as well as from defense to competition, etc. “, so as to improve economic benefits of patented technology and promote the high-quality development of the economy of both the enterprise and the country.
[1] Intellectual Property Statistics Bulletin No. 3, 2023, https://www.cnipa.gov.cn/module/download/down.jsp?i_ID=183179&colID=88 (last viewed on July 3, 2023)
[2]Annual Report on Intellectual Property Statistics 2021, https://www.cnipa.gov.cn/tjxx/jianbao/year2021/c/c1.html (last viewed on July 3, 2023)
[3]State Intellectual Property Office, Statistical Tables of Active Patents at Home and Abroad, as of March 2023, https://www.cnipa.gov.cn/col/col61/index.html (last viewed on July 3, 2023)
[4] See Article 64(1) of the Patent Law and the Supreme People’s Court’s decision on the trial of infringement of the patent, which is the only basis for determining the scope of protection of the patent right. and Article 3 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Disputes over Infringement of Patent Rights, and Article 6 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Disputes over Infringement of Patent Rights (II) (2020 Amendment)].
[5] According to the Patent Examination Guidelines, if the application documents are mailed, the postmark date of the mail shall be the filing date, but it should be noted that the date of receipt of the patent application submitted to the receiving office or representative office of the patent office through a courier company shall be the filing date.
[6] At the twenty-fifth collective study of the Political Bureau of the Central Committee in 2020, the General Secretary clearly brought forward the need to achieve “the transformation from a large country of intellectual property importation to a large country of intellectual property creation, and the transformation from the pursuit of quantity to the improvement of quality”.
[7] The three regular indicators and five exceptions in the “Guidelines for the Evaluation of Technological Innovation Attributes (Trial)” set forth the requirements of “more than five invention patents that form the income from main business” and “more than 50 invention patents (including national defense patents) that form the core technology and the income from the main business”, respectively.
[8] According to Article 7 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Disputes over Infringement of Patent Rights, the people’s court shall examine all the technical features recorded in the claims of the right holders when judging whether the accused infringing technical solutions fall within the scope of protection of the patent right. If the infringing technical solution contains the same or equivalent technical features as all the technical features recorded in the claims, the people’s court shall determine that it falls within the scope of protection of the patent right; if the technical features of the accused infringing technical solution, when compared with all technical features recorded in the claims, lacks more than one technical feature recorded in the claims, or if more than one technical feature is not the same or equivalent, the people’s court shall determine that it does not fall within the scope of protection of the patent right. The Patent Examination Guidelines also states that if the invention, when compared with the prior art, still maintains all the original functions or brings about unexpected technical effects after the invention omits one or more elements (e.g., a product invention omits one or more parts or a method invention omits one or more steps), the invention will be deemed to have outstanding substantive features and significant progress, thus being considered inventive.
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