31 Jan 2020 in Newsletter
The New Year Gift from CNIPA: Amendments to Patent Examination Guidelines
By Han-Mei Tso
The China National Intellectual Property Administration (CNIPA) on the very last day of 2019 sent out to the IP community its new year gift – an official announcement of amendments to the Patent Examination Guidelines (hereinafter the “Guidelines”) to be effective as of February 1, 2020. The amendments were announced only a few months after the CNIPA previously published extensive amendments to the Guidelines. The latest amendments are particularly focused on guidance regarding examination of computer-implemented inventions.
Part II of the existing Guidelines relates to substantive examination of invention patent applications and has an entire chapter (Chapter 9) regarding examination of computer-implemented inventions. The recently announced amendments add a new section (Section 6) to this chapter to deal specifically with invention patent applications containing algorithm features or business rule and method features, such as artificial intelligence, “Internet+,” and “big data.” New Section 6 sets forth three criteria for examining these types of the invention patent applications on multiple facets including subject matter eligibility, novelty, and inventive step, accompanied by numerous, concentrated examples illustrating application of the criteria. The new section also sets forth the requirements for drafting specifications and claims of such types of invention patent applications.
Section 6.1 establishes a ground rule for the examination criteria that “[i]n examination, technical features should not be simply isolated from algorithm features or business rule and method features, and a claim should be considered as a whole to analyze the technical means, the technical problem to be solved, and the technical effect to be achieved with respect to the claim.” This rule, on the one hand, properly demonstrates the “technical” focus in the analysis of invention patent applications under the Chinese patent system, and on the other hand, emphasizes the possible contribution of the algorithm features or business rule and method features to the three examination criteria being analyzed.
The first two newly-announced examination criteria address patent subject matter eligibility. The Chinese Patent Law includes two articles governing the issue of patent subject matter eligibility. Article 2 provides, among other things, the legal definition of an “invention,” which is eligible for protection by an invention patent; Article 25 enumerates several exceptions to patent eligible subject matter, including rules and methods for mental activities. The first new criterion establishes the threshold for exclusion from the Article 25 exceptions. Specifically, inclusion of a technical feature safeguards a claim from a rejection under Article 25 as merely reciting a rule or method for mental activities.
However, the inclusion of a technical feature only gets the claim as far as surviving scrutiny under Article 25. Next, patent eligibility will be examined against the second criterion relating to the definition of an “invention.” Article 2 of the Chinese Patent Law defines an invention fundamentally as a technical solution. To qualify as a technical solution, as required by the second announced criterion, the claim has to “recite technical means applying the laws of nature to solve a technical problem, thus obtaining a technical effect in conformity with the laws of nature.” Interestingly, the use of a computer for executing, for example, an algorithm guarantees the recitation of a technical feature and thus conformity with Article 25, but it does not necessarily constitute a “technical means applying the laws of nature.” Two examples are given in Section 6.2 in which the means involving the computer applies the user-set rules or the laws of economics, as opposed to the laws of nature, to solve a non-technical problem — and results in no technical effect in conformity with the laws of nature. As a general rule, a claim that involves an algorithm combined with a specific application in a technical field to solve a certain technical problem will usually meet the second criterion.
On patentability in view of prior art, the third announced criterion provides that all features of a claim, including both technical features and algorithm or business rule and method features, should be considered in evaluation of novelty. Likewise, in evaluation of inventive step, technical features and algorithm or business rule and method features should be considered “as a whole” provided that such algorithm or business rule and method features “have mutual supportive and interactive relations in function with the technical features.” The amended Guidelines further specify that to “have mutual supportive and interactive relations in function with the technical features” means that the technical features and the algorithm or business rule and method features are closely combined to constitute the technical means to solve a certain technical problem and that a corresponding technical effect can be obtained. In other words, contribution of the algorithm or business rule and method features to the “technical means” for solving the technical problem should be considered in relation to the closely related technical features.
At the end of new Section 6, a few requirements are stated on drafting specifications and claims of invention patent applications containing algorithm features or business rule and method features. For example, when drafting a specification, an abstract algorithm should be combined with a specific technical field. If user experiences are improved, it should be described how improvements of the user experiences are produced or brought about by both the technical features and the algorithm or business rule and method features that have mutual supportive and interactive relations in function with the technical features, both of which constitute the invention. In drafting claims, it is emphasized that technical features and algorithm or business rule and method features that have mutual supportive and interactive relations in function with the technical features should be recited in a claim.
The recent amendments will be effective as of February 1, 2020, and provide patent practitioners with helpful guidance that improves their ability to successfully protect clients’ computer-implemented inventions in China.