Interpretation on the Modification of the Creative Part of the Patent Examination Guide

2023Year12Month21On the same day, the State Intellectual Property Office published the revised "Guidelines for Patent Examination", which will be published on2024Year1Month20From the day of implementation. at that time,2010Year1Month21The "Guidelines for Patent Examination" published on the same day and the relevant announcements published thereafter will be abolished.

In this revision, a significant change in length has been introduced in the section of the creative commentary that is relevant to each applicant. Compared2021Revised version of the second step in the three-step method“（2) To determine the distinguishing features of the invention and the technical problems actually solved by the invention, the following content has been added:

In a special case, when all the technical effects of the invention are equivalent to the closest existing technology, the technical problem of re-determination is to provide an alternative technical solution different from the closest existing technology.

The re-determined technical problem should match the technical effect that the distinguishing feature can achieve in the invention, and should not be determined as the distinguishing feature itself, nor should it contain guidelines or hints to the distinguishing feature.

[for example]]

The claimed invention is a consumer electronic device comprising a biometric authentication unit for authorizing an account of a user, the authentication unit being based on a combination of a fingerprint and at least one authentication means selected from the group consisting of a palm print, an iris, a fundus, and a facial feature. The specification states that the user account can be made more secure by at least two types of authentication. The closest prior art discloses a consumer electronic device that performs identity authentication based only on fingerprint information. The difference between the two is that the invention performs identity authentication through at least two biological features, and according to the technical effect that the distinguishing feature can achieve in the claimed invention, it can be determined that the technical problem actually solved by the invention is how to improve the user account security of the consumer electronic device. The technical problem that the invention actually solves cannot be determined as how to add at least one biometric authentication method such as palm print.Or "how to achieve security in consumer electronics devices by adding authentication methods".

The author believes that this revision is intended to remind the examiner in the process of commenting on creativity, should avoidThe problem of "technical means. The so-called "means of technical problems" refers to one of the non-standard comments that confuse technical problems with technical characteristics and completely ignore technical effects. In this way, as long as it is a comparative document containing distinguishing technical features (means), it can be incorporated into the closest existing technology without hindrance, thus undermining the creativity of the scheme to be reviewed. This way of comment makes the "three-step method" that can enhance the objectivity of creative evaluation exist in name only, which seriously affects the interests of patent applicants.

After this amendment, the applicant's interest protection is more evidence-based. At the same time, it also provides a reference for the applicant and the agent in the pre-development and writing process. A creative scheme should not only have obvious differences from the existing technology, but also the positive effects of these differences should be fully reflected in the application documents. At this time, there can be sufficient reasons to explain that the present application can solve different technical problems from the prior art, and therefore it is creative. Especially for experimental disciplines such as biology, medicine, chemistry, and materials, due to the huge unpredictability of experimental results, it is often difficult to intuitively determine the difference in effect between the present application and the prior art by distinguishing technical features. Therefore, in the preliminary preparation, more attention should be paid to the collection and collation of quantifiable experimental data that can reflect the technical effect, so as to establish the following substantive review."The technical problems that this application can actually solve" provides a strong basis.