In the patent right authorization, the determination of inventiveness is a hotspot and difficulty, as some “specious” problems are often involved in the determination, for instance:
1. With respect of “unexpected technical effect”
1.1 The improvement to what extent can be regarded as “unexpected technical effect”;
1.2 Whether “unexpected technical effect” needs to be disclosed in the specification;
1.3 Whether “one-way street” restrictive clause in the European Patent Law should be introduced into China;
2. Whether the “limited times of experimentation” can be used to evaluate the inventive step;
3. Whether the prior art refers to the Reference as an entirety or a technical solution in Reference 1; accordingly, whether the evaluation of inventiveness is based on the teaching of one technical solution in the prior art or based on the teaching of the Reference as an entirety.
With respect of the above problems, the writer holds the following opinions:
1.1 “unexpected technical effect” lays its emphasis on “unexpected” rather than data or metric presented by the “technical effect”. Therefore, one should return to the determination of “technical inspiration” at the evaluation of “unexpected”. Therefore, in the actual practice, in the argument for “unexpected technical effect”, compared with simply dwelling on technical effect per se, the analysis with respect of technical inspiration/technical solution may be more convincing.
1.2 It is pointed out in《Annual report of the Supreme People's Court on intellectual property cases (2012) 》that “in the determination of inventiveness, if the patent applicant supplements the comparison of experimentation data after the application date to support the unexpected technical effect achieved by the patent technical solution, the experimentation data is accepted on the precondition that the technical effect to be supported is explicitly disclosed in the original application document”. The writer holds that it is inappropriate that the specification can be taken as meeting the requirement of “the technical effect to be supported is explicitly disclosed in the original application document” only when it discloses the patent (patent application) achieves unexpected technical effect with respect of the document/prior art being actually used in the determination of inventiveness. The reasons are as follows: objectively speaking, the specification of the patent unlikely just discloses the unexpected technical effect with respect to the Reference; on the other hand, based on the theory of “open for protection”, the specification should at least disclose the respective general technical effect.
1.3 The Europe Patent Office generally admits that “unexpected technical effect” incurs inventive step. However, there is restrictive clause of “if, having regard to the state of the art, it would already have been obvious for a skilled person to arrive at something falling within the terms of a claim, for example due to a lack of alternatives thereby creating a "one-way street" situation, the unexpected effect is merely a bonus effect which does not confer inventiveness on the claimed subject-matter”. However, a cautious attitude is held as for whether the restrictive clause of “one-way street” is introduced into China. Firstly, with respect of the patent, as the feature is inevitable selection, it may be non-obvious as it does not appear in the prior art; secondly, “technical effect” is in a close association with the economic sense produced thereby, the current economics of country and the inventions that are encouraged should be taken into account as for whether it is introduced.
2. “Limited times of experimentation” can not be used in the evaluation of inventiveness. The reasons are as follows:
Firstly, “limited times of experimentation” is substantially different from “limited experimentation” in the relevant provisions of the Guideline for Examination. “Limited times of experimentation” lays emphasis on the number while “limited experimentation” lays emphasis on the experimentation range or capability.
Secondly, it does not meet the requirement of “administration according to the law” to evaluate the inventive step using “limited experimentation”. In the Guideline for Examination, “limited experimentation” is comprised in the definition of “prominent substantive features”, and the examination approach concerning the inventive step is provided subsequently. There is no teaching in the Guideline for Examination to directly use “limited experimentation” in the evaluation of inventive step.
Thirdly, it is contrary to the teaching of the Guideline to evaluate inventive step using “limited experimentation”, which prescribes “the way in which an invention is accomplished, no matter how arduous or easy it is, shall not affect the evaluation of the inventive step of the invention”, it can be known that whether it can be obtained via “limited experimentation” is not necessarily related to the inventive step.
Fourthly, the key point in the comments on the inventive step lies in the teaching of the technique, and what counts is whether it is “motivated” to perform “limited experimentation”, i.e. success predictability other than whether it can be obtained through “limited experimentation”, namely it is a problem of “would or not” rather than a problem of “could or not”.
3.“Prior art” refers to a specific technical solution in the Reference. However, as for the evaluation of inventive step, the teaching of the prior art shall be commented on with respect of the Reference as an entirety, the reasons lie in the follows: firstly, from the aspect of creating an invention by inventor, the evaluation of inventive step should simulate the invention-making process as true as possible so as to objectively evaluate the inventive step of the invention, however, those skilled in the art unlikely rapidly “locate” a certain technical solution, or even a specific technical feature in a certain paragraph without reading through the Reference; secondly, from the aspect of those skilled in the art, they are “who know all of the common technical knowledge in the present field and can acquire all of the prior art in the present field”, as the content of the whole text of Reference 1 is prior art, thereby the content of the whole Reference should be taken into consideration to know the development of the prior art and discover the difference of the invention conception.