Since early 2015, in examining patent applications for invention, examines in the State Intellectual Property Office of China (SIPO) have been more and more focusing on the patentability issues, especially inventiveness issues. For instance, with respect to claims apparently covering broad protection scope, examiners used to raise support objection that the claims were not supported by the description under Article 26.4 of the Patent Law; nowadays, in similar scenarios, examiners raise inventiveness objection under Article 22.3 of the Patent Law on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art. Also, in raising inventiveness objection, examiners usually emphasize obviousness of the claims over the prior art. This trend poses new challenge to patent attorneys and applicants. To address the inventiveness objection, practitioners may consider using the following strategies.
1. Formulating arguments highlighting the non-obviousness of the claims
In rebutting inventiveness objections, it is important that the arguments highlight the non-obviousness of the claims over the prior art, in addition to the superior technical effects disclosed in the description.
For instance, the applicants may prove that the two or more references cited by the examiner are mutually exclusive in terms of working principles, and accordingly cannot remedy each other or cannot be combined with each other–a fact proving that the references would not prompt those skilled in the art to arrive at the claimed invention.
2. Submitting prior art evidence or further experimental data
Applicants may consider submitting prior art evidence to support the claims to the extent that the prior art would not be detrimental to the claims (e.g., without reinforcing the references cited by the examiner). For instance, if the examiners raise inventiveness objection on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art, applicants may submit a piece of prior art which shows that all the claimed embodiments are underlain by the same theorem and are expected to produce the intended technical effect, thus proving that the claims covers embodiments all being inventive over the cited prior art.
In addition, the applicants may consider submitting further experimental data to support the claims in terms of inventiveness. In this connection, it must be noted that examiners usually do not consider further experimental data intended to support the claims in terms of protection scope, and the data to be submitted is preferably collected by repeating the experiments disclosed in the applicants' description with the technical solution of the prior art. For instance, in an application directed to a medicament, if the description recites an experiment wherein a medicament is used to treat a patient and produces unexpected effect, such data is preferably collected by repeating the experiment with a medicament specifically disclosed in the cited prior art and is considered as the closest to the claims; it is expected that the medicament specifically disclosed in the cited prior art produces an effect inferior to that produced by the inventive medicament, thus proving the inventiveness of the claimed invention in an indirect and roundabout way.
3. Amending the claims
If the above two strategies do not work for lack of such a piece of prior art or further experimental data (as mentioned, examiners usually do not consider further experimental data intended to support the claims in terms of protection scope), or because the line of argumentation based on the submitted prior art will negatively affects the claims in terms of patentability, the applicants may consider narrowing down the scope of the claims. This strategy especially applies to applications where examiners object that not all the technical solutions encompassed in the claims are inventive over the prior art - in essence, such objection amounts to the former support objection that the claims were not supported by the description under Article 26.4 of the Patent Law. By so doing, the claims are amended to include technical solution which is inventive over the cited prior art.
Understandably, in view of the specific circumstances surrounding the claims, the above strategies may be used in combination.
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.
