Business method application cannot be granted a patent right
before the SIPO, unless you are very careful at the very beginning
of drafting an application, fully understand the special tactics
during prosecution of the application, and foresee the direction
SIPO is heading regarding examination of a business method
application.
We are able to help you with our expertise in drafting and
prosecuting the application, and our interactions with the
SIPO.
BACKGROUND
Business method application is likely to be rejected under
Paragraph 2, Article 2 of the Chinese Patent Law, which prescribes
that, "invention means any new technical solution relating to
a product, a process or improvement thereof," because business
method is deemed as being created in compliance with "law of
society" instead of "law of nature", thus it is not
a "technical solution."
Usually, instead of directly assessing the solution defined in
claims, examiners of the SIPO will reject business method
application by stating that there has no technical contribution as
there exists no technical problem to be solved.
This causes a big trouble for our clients as it is hard to respond
to this kind of office action.
CHANGES TO BE MADE
The amount of rejection under Paragraph 2, Article 2 of the Chinese Patent Law will be intentionally controlled by the SIPO as examiners are encouraged to address business method application with Paragraph 3, Article 22, i.e., requirement on inventiveness.
SOLUTION TO CLIENT
To get a patent granted, when drafting application for business
method, we suggest avoid claiming sensitive subject matters;
describe detail the "technical" aspect of the invention
in the specification and highlight it in the claims, deemphasize
the "business" aspect, and try not to be limited to
business
application.
We have been told by SIPO experts during seminars we held that the
SIPO has studied the EPO practice and is highly likely to adjust
its examination practice likewise. This means: 1) combination of
technical and nontechnical features is usually considered as an
invention; 2) when assessing whether a claimed subject matter is an
invention, prior art or common general knowledge shall not be
referenced; and 3) this does not mean any method that uses
technical means can be patented. It must further include a novel
and non-obvious solution that solves a technical problem and has
practical applicability.
We are keeping an eye on the progress of this matter and will keep
our clients informed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.