China: Essential Features And The Technical Problems

Last Updated: 27 May 2016
Article by Xiaojun Guo and Weiwei Han

In an invalidation case involving the invention patent entitled "carriage for motor vehicles", the Supreme People's Court held that essential technical features recited in an independent claim have to be regarded all features which are necessary to solve the technical problem with which the application is concerned, and where the description explicitly indicates that the patent technical solution can solve a plurality of technical problems simultaneously, an independent claim must encompass all the technical features essential for the concurrent solution of the plurality of technical problems. The Supreme People's Court's Administrative Judgment No. Xingtizi 13/2014. Coincidentally, the Boards of Appeal of the European Patent Office (EPO) ruled in T2001/12 of 29 January 2015 that essential technical features defined in an independent claim are indispensable for solving the technical problem to be solved by the application.

The technical problem to be solved by the patent plays a key role in determination of essential technical features of a claim, which is not expressly stipulated in the Chinese Patent Law. How to determine "the technical problem" depends, in essence, on whether the tenets of the Chinese Patent Law are satisfied and what happens in reality.

I. Invalidation case involving the invention patent entitled "carriage for motor vehicles" and T2001/12

1. Invalidation case involving the invention patent entitled "carriage for motor vehicles"

The patentee, ELECON ASIA S.A., owned a patent for invention No.02803734.0, entitled "carriage for the horizontal transfer of motor vehicles in automatic mechanical car parks". Upon request by the petitioners, Liu Xiayang and Yeefung Company, for invalidation of the above-mentioned patent, the Patent Reexamination Board (PRB) made the Decision No. 14538, holding that claims 1 to 3, claims 5 and 6 according to any one of claims 1 to 3, and claims 7 to 15 of the patent in suit lack essential technical features and do not comply with the provision of Rule 21.2 of the Implementing Regulations of the Patent Law (in correspondence to Rule 20.2 of the Implementing Regulations of the Patent Law of 2010), thereby declaring all those claims invalid.

Claim 1 of the patent in suit claims a self-propelled carriage on wheels (3),wherein means (58, 59) are respectively configured to support, center, immobilize and lift motor vehicles.

As regards one of the focal issues in the present case, namely, determination of the technical problem to be solved by the patent in suit, the Invalidation Decision stated that the means having the above functions can solve the technical problems of increasing the speed of conveying motor vehicles and reducing the carriage costs, but claim1 fails to recite, in detail, the structure of the means (58, 59) and how to achieve the above functions. Both the Beijing No.1 Intermediate People's Court and Beijing Higher People's Court ruled in their judgments that the PRB's finding that claim 1 lacks essential technical features was correct and therefore maintained the PRB's decision.

In the retrial filed by the patentee, the Supreme People's Court held that:

"According to the technical problems, background art and advantageous effects recited in the description of the patent in suit, the patent in suit intends to solve the technical problems in the following four aspects simultaneously, i.e., reliable conveyance, conveying speed, reduced space, and lower costs. In this case, independent claim 1 shall encompass essential technical features necessary for solving the technical problems in the four aspects at the same time." Accordingly, it was found that the Invalidation Decision and the second-instance judgment erred in fact-finding and application of laws.

The Supreme People's Court made a thorough analysis of the technical problem determined when judging whether a claim lacks essential technical features and distinguished it with the "technical problem" determined when judging an inventive step:

"Rule 21.2 of the Implementing Regulations of the Patent Law aims to further standardize the corresponding relationship between the description and an independent claim(which has the broadest protection scope among the claims in the claim set) such that the technical solution defined in the independent claim conforms to the contents, in particular the background art, the technical problem and advantageous effects, as recited in the description. Thus, the 'technical problem' mentioned in Rule 21.2 of the Implementing Regulations of the Patent Law refers to the one intended to be solved by the patent as recited in the patent description and as alleged by the patent applicant in the description according to its or his subjective cognition of the background art described in the description. The technical problem to be solved by the patent is presented from different perspectives in consideration of mutual relation and confirmation among the background art, the technical problem and advantageous effects recited in the description. When determining the technical problem to be solved by the patent, we shall take the technical problem recited in the description as a basis and take comprehensive account of the contents, such as the background art and its technical defects, and advantageous effects achieved by the patent in suit over the background art. The technical features per se recited in the independent claims are not the basis for determination of the technical problem to be solved by the patent."

"The 'technical problem' mentioned in Rule 21.2 of the Implementing Regulations of the Patent Law is different from the technical problem to be actually solved by the patent re-determined according to the distinguishing technical features of a claim over the closest prior art when judging whether the claim involves an inventive step."

2. T2001/12 at the EPO's Boards of Appeal

The applicant filed an appeal to the EPO's Boards of Appeal against the decision refusing the European patent application No.08764638.6, entitled "memory device and its reading method", as not meeting the requirements of Articles 83, 84 and 54 of the European Patent Convention (EPC).

Claim 1 of the patent in suit is related to a memory device which was supported to be capable of "reducing the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device" according to the description. In relation to the "essential technical features" requirement under Article 84 EPC, the examining division found that claim 1 did not define the features which would enable the above-mentioned effect to be obtained, and the requirements of Article 84 of the EPC were not met because the claim did not recite all the features essential for the definition of the invention. The Boards of Appeal, however, held a negative view towards this decision for the following two reasons: firstly, in the section entitled "Problem to be Solved by the Invention", several problems are mentioned, including providing a "memory device which can reduce the voltage for writing and erasing". However, although the disputed effect of "reducing the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device" is mentioned in the description, achieving this effect is not stated to be the problem to be solved by the invention. There is therefore no basis for arguing that features necessary to achieve this degree of reduction are essential to the definition of the invention. Secondly, even if it were accepted that the technical problem underlying the invention is to "reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device", the claims did include the corresponding technical features necessary for solving the technical problem. Notably, in the present case, the Boards of Appeal made a strict distinction between the technical problem and the technical effect, which was quite different from the usual cases.

The Boards of Appeal in the present case took a view that the technical problem which the essential technical features in a claim are intended to solve must be recited in the description:

"[e]xamination for compliance with this requirement (namely, Article 84 EPC) does not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to any prior art cited in the application with respect to which the invention has been disclosed";

"a doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

if the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention". T2001/12, point 4.4.

It is so far unclear whether the above way of determination of the technical problem to be solved for defining the essential technical features will be incorporated into the case law.

II. "Essential technical features" and the technical problem to be solved

Rule 20.2 of the Implementing Regulations of the Patent Law of 2010 provides that an independent claim shall outline the technical solution of an invention or utility model and state the essential technical features necessary for the solution of its technical problem. In light of Section 3.1.2, Chapter Two, Part II of the Guidelines for Patent Examination (2010 edition, the same below), essential technical features refer to the technical features of an invention or utility model that are indispensable in solving the technical problem and the aggregation of which is sufficient to constitute the technical solution of the invention or utility model and distinguish the same over the technical solutions described in the background art. In view of patentability, essential technical features included in the independent claim "have two meanings: one is that the independent claim shall outline the technical solution of an invention or utility model wholly, rather than only one or a few of the components, and the other is that the independent claim shall state all the essential technical features necessary for the solution of its technical problem, in other words, the technical solution claimed in the independent claim can solve the technical problem to be solved as recited in the description, and the technical solution and the technical problem to be solved shall correspond to each other." Yin Xintian (March 2011). Detailed Annotation of the Chinese Patent Law (1st ed., p.369).

1. "Essential technical features" requirement and provisions on the "support" and "clarity" issues under Article 26 of the Patent Law

Article 26.4 of the Patent Law provides that the claims shall be supported by the description and shall define the extent of patent protection sought for in a clear and concise manner, which mainly conveys two meanings: one is that the claims shall be supported by the description, to put it another way, the scope of rights sought for by the patentee by means of the claim set shall accord with the disclosure of the invention to the public and the contributions of the invention to the prior art, and the other is that the claims must be clear and concise, which is the basic requirement of the "notice function" of claims.

"Different from Rule 21.2 of the Implementing Regulations of the Patent Law that is only applicable to circumstances where the independent claim lacks essential technical features, Article 26.4 of the Patent Law can be used in a broader sense, i.e., it is applicable not only to independent claims but also to dependent claims, not only to the circumstances where the technical features (e.g., functional technical features) in the claims are defined in a way too broad to be supported by the description, but also to the circumstances where independent or dependent claims lack essential technical features such that the technical solutions defined in the claims cannot solve the technical problem to be solved by the patent, and that a claim as a whole is not supported by the description." The Supreme People's Court's Administrative Judgment No. Xingtizi 13/2014.

Pursuant to the provisions in Section 3.2.1 "Support in the Description", Chapter Two, Part II of the Guidelines for Patent Examination, if the generalization of a claim is such that the person skilled in the art can reasonably doubt that one or more specific terms or options included in the generic terms or parallel options cannot solve the technical problem aimed to be solved by the invention or utility model and achieve the same technical effects, it shall be taken that the claim is not supported by the description. Thus, in the matter of "support", account shall be taken of whether the technical solution of the claim can solve the technical problem aimed to be solved by the invention or utility model.

The provisions on "clarity" in Section 3.2.2, Chapter Two, Part II of the Guidelines for Patent Examination mainly concern the cases where the claims are rendered unclear due to inappropriate language or terms. Additionally, a claim may be unclear due to failure to clearly define the relationship between, for instance, two features. In this case, the "clarity" requirement and the "essential technical features" requirement might overlap each other to some extent.

Hence, the "essential technical features" requirement and the provisions of Article 26.4 of the Patent Law overlap each other in terms of application range but with their respective emphasis. In practice, the "essential technical features" requirement puts more emphasis on delimitation of the technical features of a claim according to the technical problem to be solved by the invention.

2. Technical problem to be solved by essential technical features

There are generally two types of technical problems to be solved by an invention: (1) "objective technical problem" to be solved by an invention that is determined in view of the closest prior art when judging whether an invention involves an inventive step, such as the technical problem stipulated in Section 2.2.4,Chapter Two, Part II of the Guidelines for Patent Examination, Section 5.2, Chapter VI, Part G of Guidelines for Examination in the EPO or Annex of Chapter 13 of the PCT International Search and Preliminary Examination Guidelines; and (2) "subjective technical problem" recited in the description that is determined by an applicant according to the prior art he or she grasps.

It is stipulated in Section 5.1 "judgment on essential technical features", Chapter Two of Implementing Rules for Patent Examination (2011 revised edition) that "in judging whether a technical feature is essential or not, it is necessary to consider the technical problem to be solved by an invention while bearing in mind the entire contents described in the description", and the technical problem can be (1) the one explicitly recited in the description; (2) the one directly determined through reading of the description; and (3) the one that can be determined according to the technical effect or technical solution recited in the description.

As to "objective technical problem" standard, some experts deemed that "essential technical features in a technical solution, namely technical features necessary for 'solving the technical problem', are important technical features in the claimed technical solution which are closely related to the inventive step and the gist of the invention". Some experts opined that the technical problem for judging essential technical features of a claim refers to "the prior-art problems to be solved by an invention or utility model and the technical problems to be actually solved by the invention or utility model."

In the before-mentioned invalidation case involving the invention patent entitled "carriage for motor vehicles", the PRB determined the technical problem to be solved by the invention according to the technical solutions defined in the claims, thus the technical problem seems to be like an "objective technical problem". However, it is apparent that the Supreme People's Court's ruling is in support of the "subjective technical problem" standard, which further highlights the importance of the "essential technical features" requirement.

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