The newly revised patent review guide (hereinafter referred to as the guide) is scheduled to become operational on 1 february 2020. In order to better guide patent applications and review practice, the main elements of this change are presented and interpreted。
I. Modification of the background
In order to fully implement the decision-making deployments of the party central and state council to strengthen intellectual property protection, and in response to the demand of innovative subjects for rules for the examination of patent applications in new areas of new business, such as artificial intelligence, the national intellectual property authority has undertaken a thematic study on the intellectual property protection regime in new business, and has initiated a timely revision of the guide, based on a synthesis of issues and a review of practical experience. The revision refined the rules for the examination of patent applications in the relevant areas, clarified many of the difficulties in reviewing practices and sought to achieve the goal of further improving the quality and efficiency of patent reviews and supporting innovation-driven development。
Ii. The revision process
In august 2019, the national intellectual property authority officially launched the refinement of part ii, chapter ix, of the guide, which resulted in the draft revision of the patent review guide (advisory draft) and made public its comments to society from 12 november to 11 december 2019. The comments received were collated, summarized, analysed and justified, and the draft was further refined, resulting in a revised draft of the patent review guide (for review). In december 2019, the decision of the national intellectual property authority on the revision of the patent review guide was considered and adopted by the council and published in the state intellectual property agency circular no. 343 of 31 december. The newly revised guide will become operational on 1 february 2020。
Iii. Modification
New section 6 of part two, chapter ix, of the guide, “provisions relating to the review of patent applications for inventions that include algorithmic or commercial rules and methodological features”; sub-sections 6. 1, 6. 2 and 6. 3, “review of benchmarks”, “examples of review” and “descriptions and preparation of claims”, respectively. This modification, combined with specific examples, clearly defines the object of authorization for such applications, their novelty and creativity, their description and the writing of claims。
(i) review of benchmarks (section 6. 1)
General principles for review are established in section 6. 1, “review of benchmarks”。
1. Emphasis on the principle of holistic consideration of claims
Patent applications for inventions involving artificial intelligence, “internet+”, large data and block chains often include rules and methodological features of intellectual activity such as algorithms, business rules and methods. This revision makes it clear that in the review, technical characteristics should not be simply severed from the characteristics of algorithms or commercial rules and methods, but should be taken into account as a whole. It is impossible to objectively evaluate the substantive contribution of inventions and to protect real inventions if these characteristics are simply ignored or severed from technical features。
2. Criteria for the review of rules and methods for determining whether claims are intellectual (section 6. 1. 1)
The modification makes it clear that the right to claim is a rule and method of intellectual activity and should not be patented if it involves abstract algorithms or purely commercial rules and methods and does not contain any technical characteristics. However, as long as the claim contains technical characteristics, it is not a rule and method of intellectual activity as a whole and its patentability should not be excluded under article 25, paragraph 1 (b), of patent law。
3. Clarify whether claims fall within the criteria for review of technical programmes (section 6. 1. 2)
The changes clarify the order of review of the legal provisions relating to the object. With regard to the subject of a request for protection, it should first examine whether it is not a rule or method of intellectual activity and then whether it is a technical programme under article 2, paragraph 2, of patent law. In determining whether a claim is a technical option, an analysis should be made of the technical means involved, the technical problems addressed and the technological effects obtained, which is consistent with the principles of the technical options set out in part two, chapter i, section 2, of the guide, which are the aggregation of technical means using natural patterns to resolve technical problems。
4. Further clarify the principle of correlation in creative judgement (section 6. 1. 3)
As noted earlier, the revised guide identifies the principle of holistic consideration in the review, which applies equally to novelty and creative judgement. In addition, in its creative judgement, the guide further clarifies the principle of linkage considerations, i. E., the contribution of algorithmic or commercial rules and methods characteristics to technical programmes that are functionally mutually supportive and interacting with each other should be considered as a whole and the technical characteristics described. The guide explains and provides examples of the concept of “functionally mutually supportive and interactive”. Here, “functionally mutually supportive and interactive” is consistent with the statement in the patent review guide issued by the national intellectual property authority in 2019 that changes are made in part two, chapter iv, section 3. 2. 1. 1, of the creative judgement that “for the technical characteristics of functionally mutually supportive and interactive relationships, the technical characteristics described and the technical effects of their relationship in the inventions for which protection is required should be considered as a whole”。
(ii) example of review (section 6. 2)
Section 6. 2 adds 10 examples of both positive and negative reviews of authorized objects and creativity. Example 1-6 is an example of a review to determine whether or not it is an authorized object. Example 1 is an abstract mathematical modeling method that falls under the rules and methods of intellectual activity provided for in article 25 (1) (b) of the patent act. Examples 2, 3 and 4 are authorized objects in the area of artificial intelligence, business models and block chains, while examples 5 and 6 are negative examples. Example 7-10 is an example of a review to determine whether a protection programme is creative when it is an authorized object. Examples 7 and 9 are examples of creativity, and examples 8 and 10 are examples of lack of creativity. The review examples in section 6. 2 are a further interpretation of the review principles described in section 6. 1 and should be understood with a focus on the review concepts and legal principles it embodies, rather than simply mechanically。
Some of these examples are further illustrated here。
Example 7 involves a method of detection of the fall status of human robots based on multi-sensor information. The whole line of thinking for its creative judgement is that when it is retrieved, comparative document 1 is found, the pace planning and feedback controls based on sensor information are made publicly available and robot stability is judged on the basis of relevant integration information, including the evaluation of human robot stability based on multiple sensor information. Following a comparison, the comparison document 1 was identified as the closest available technology, and the difference between the solution of this application and that of comparison document 1 was the realization algorithm of vague decision-making. On this basis, a further determination is made as to whether the characteristics of the algorithm are functionally supportive of each other and interact with each other, i. E., whether they are closely integrated, together constitute a technical means of solving a technical problem, and have the corresponding technological effects, i. E., whether a technical contribution has been made. After a positive conclusion, this algorithm feature is taken into account in determining the technical problems actually resolved in the present application and in determining whether there is a combination of revelation in existing technology. Since the algorithm for the realization of this vague decision and the judgement applied to robot stability were not made public by other comparative documents or by common sense, its creativity was finally recognized。
Example 10 relates to a visualization of the dynamic evolution of views. The whole line of thinking for its creative judgement is that, after searching, a comparison of document 1 was found and an emotional-based visualization method was revealed, in which time was expressed as a horizontal axis, and the width of each ribbon at different times represented the measure of an emotion at that time, with different colour belts representing different emotions. After comparison, the comparison document 1 was identified as the closest available technology, and the difference between the solution in this application and the comparison document 1 is the specific classification rules set for emotions. Since the technical means of colouring the corresponding data can be the same and do not need to be changed, even if the rules of emotional classification differ, they are not functionally supportive and interactive with specific visualizations and do not contribute to technical programmes. Thus, in order to determine the technical issues that are actually resolved in the present application, it is possible to conclude that the claim is not actually resolved in relation to the technical issues that were not actually resolved in contrast to document no. 1, and thus to conclude directly that the claim is not creative. It should be emphasized here that the claim in this application does not actually resolve any technical problems in relation to comparative document 1, rather than that the claim itself does not resolve any technical problems. The issue of so-called “visualization” has been resolved in comparative paper 1, and the contribution of this application to the existing technology is to propose a new emotional classification rule. It should also be noted that, in the context of this claim, the claim addresses the visualization of the specific emotional rule, using technical techniques to colour the corresponding data, using the natural attributes of the visual sense of the human eye, following natural patterns and obtaining the technical effect of demonstrating the evolution of a dynamic view, thus complying with article 2, paragraph 2, of the patent law。
It should be noted that, for patent applications involving algorithms, if the claim is the same as the application scene of the closest available technology, the difference is only an adjustment to the algorithm, such as the identification of barriers in unmanned driving, where parameters and formulas have been re-selected or adjusted, the technical problem that the claim addresses in practice is to further improve the accuracy of the detection of the barrier and, if there is no overall technological revelation in the available technology to address the problem, the claim is not obvious; if the difference between the claim and the closest available technology is only different from the application scenario, factors such as proximity, ease, need to overcome technical difficulties, availability of technological revelations and technical effects of conversion are often taken into account in determining creativity。
(iii) preparation of statements and claims (section 6. 3)
1. Specify the basic requirements for writing (section 6. 3. 1)
In the case of patent applications for inventions that contain algorithmic or commercial rules and methods characteristics, it should first be noted that the specificity of such applications is that of algorithmic or commercial rules and methods, and that these characteristics should be identified in the instructions. Second, it is necessary to spell out how technical characteristics address technical issues together with these characteristics “functionally supportive and interactively”. For example, in the case of patent applications for artificially intelligent inventions, because of the peculiarity of their internal operation, where an invention contains algorithmic features, abstract algorithms should be combined with specific technical domains, and at least one definition of input parameters and their related output should be linked to specific data in the technical field, where the term “incorporation with specific technical fields” is not simply a reference to which technical areas should be applied, but rather a description of the process of integration, so that technicians in this field can identify them. Third, useful effects, such as improved quality, accuracy or efficiency, improved performance within the system, should be identified in the instructions, which should be explained or demonstrated where necessary. Fourthly, if, from a user's point of view, the invention objectively enhances the user's experience, i. E., the enhancement of the user's experience is an objective, non-personal, subjective preference, it can also be described in the instructions, as well as how the enhancement of the user's experience is derived or generated by the technical characteristics that make up the invention and by the algorithmic or commercial rules and methods that support each other and interact with each other in their functions。
2. Identification of the basic requirements for the writing of claims (section 6. 3. 2)
For patent applications for inventions containing algorithmic or commercial rules and methods characteristics, the claim should record the characteristics of the technology as well as those of the algorithm or of the commercial rules and methods that interact with each other in terms of their functional support。
In general, the amendment is a refinement of the rules for the review of patent applications in new areas of new business, such as artificial intelligence, within the framework of the current patent law and its implementing regulations, with the aim of responding in a timely manner to the needs of innovative subjects and addressing the issues of review in practice. On the one hand, the beneficial practices explored in the review practice have been elevated to the guide by harmonizing the review criteria, giving clear guidance on how to better prepare such applications and promoting the improvement of the quality of applications; on the other hand, it has been made clear that the rules and methods of intellectual activity, such as technical features and algorithms or commercial rules and methods, should be taken into account in a holistic manner, taking into account the characteristics of such applications, and that the technological contribution of inventions should be properly captured in order to continuously improve the quality and efficiency of the review and contribute to the further development of new technologies and new business models。
Related link: bulletin on changes to the patent review guide (no. 343)
