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Mainland China Intends to Amend Chapter 9 of Part II of the Patent Examination Guidelines and Solicit Comments on the Revised Content
On November 12, 2019, the National Intellectual Property Administration (CNIPA) published on its website the "Draft of Amended Patent Examination Guidelines, Part II, Chapter 9 (Draft for Comment)" (hereinafter referred to as "Draft for Comment") with the intention of publicly soliciting comments on the revision of the "Patent Examination Guidelines." The deadline for soliciting comments is December 11, 2019.
The title of Chapter 9, Part II of the Patent Examination Guidelines is "Several Provisions on Examination of Invention Patent Applications Relating to Computer Programs." The "Draft for Comment" specifically adds Section 6 to Chapter 9 of Part II of the Patent Examination Guidelines, which mainly elaborates the examination rules for the invention patent applications involving new technologies, new fields and new business methods, such as artificial intelligence, Internet+, big data and blockchain, and interprets the examination rules through typical cases. The added section mainly includes the following contents:
(1) Clarifying the general principle of the examination under each clause
The main characteristic of the invention patent application involving new technologies, new fields and new business methods such as artificial intelligence lies in that the invention solution includes the features regarding rules and methods for performing mental activities such as algorithms or business rules and methods in addition to technical features. With regards to this characteristic, the "Draft for Comment" specifically emphasizes in Section 6.1 entitled "Examination Principle" that in the examination, technical features should not be simply separated from the features regarding algorithms, business rules and methods, etc., but all the contents of the claims should be treated as a whole for analyzing the involved technical means, the solved technical problems and the produced technical effects.
(2) Clarifying the examination criteria of Article 25 of the Patent Law
Item (2), Paragraph 1, Article 25 of the Patent Law stipulates that "rules and methods for performing mental activities" shall not be granted patent rights. Abstract algorithms or pure business rules and methods are "rules and methods for performing mental activities," but not all the claims that contain features regarding algorithms or business rules and methods can be classified as "rules and methods for performing mental activities." The "Draft for Comment" clarifies that if a claim contains technical features in addition to features regarding algorithms or business rules and methods, the claim is not a rule and method for performing mental activities as a whole, and its eligibility of being granted a patent right should not be rejected in accordance with Item (2), Paragraph 1, Article 25 of the Patent Law.
(3) Clarifying the examination criteria of Article 2 of the Patent Law
After determining that a claim contains technical features, it is also necessary to examine whether it is a "technical solution" as described in Paragraph 2, Article 2 of the Patent Law. In the examination practice, the "three-element" judgment method (technical problems, technical means and technical effects) is usually used to determine whether the solution in a claim is a technical solution, i.e., to examine whether the solution adopts any technical means using the natural law to solve a technical problem, and thereby obtains a technical effect in compliance with the natural law. Under such judgment method, the "Draft for Comment" further elaborates the examination criteria. For example, as long as the algorithm involved in a claim is combined with a specific technical field to solve a certain technical problem, it can be considered that the claim complies with Article 2 of the Patent Law.
(4) Clarifying the contribution of features regarding algorithms or business rules and methods to novelty and inventiveness
The "Draft for Comment" emphasizes that when a novelty examination is conducted to an invention patent application containing both technical features and features regarding algorithms or business rules and methods, all features recited in the claims shall be considered, i.e., the features regarding algorithms or business rules and methods may also affect the examination of novelty.
While in the inventiveness examination, the features regarding algorithms or business rules and methods, which functionally support the technical features and have an interaction relationship with the technical features, should be considered together with the technical features as a whole. The "Draft for Comment" further explains the meaning of "the features regarding algorithms or business rules and methods, which functionally support the technical features and have an interaction relationship with the technical features." Specifically, if the algorithm in the claims is applied to a specific technical field, or the implementation of the features regarding business rules and methods requires adjustment or improvement to the technical means, the features regarding algorithms or business rules and methods can be considered as the features that functionally support the technical features and have an interaction relationship with the technical features.
(5) Providing exemplary cases
The "Draft for Comment" adds 10 exemplary cases of invention patent applications containing features regarding algorithms or business rules and methods. These cases give positive and negative examples for the examination of eligible subject matter and inventiveness based on the aforesaid examination criteria.
(6) Refining the requirements for drafting the specification and claims
The invention patent applications containing features regarding algorithms or business rules and methods need to meet certain specific requirements in addition to the general requirements for drafting the specification and claims. For example, the specification should describe how the algorithm combines with the specific technical field, clearly describe the technical effect or user experience effect, and explain how the technical features and the features regarding algorithms or business rules and methods work together to bring about the above effect, etc.; the claims should include technical features, and features regarding algorithms or business rules and methods, which functionally support the technical features and have an interaction relationship with the technical features.