Responding to patent examination opinions is an essential skill for a qualified patent agent. In patent examination opinions, it’s common to see examiners’ question about the patentability of the applied-for subjects.
The Guidelines for Patent Examination states that the evaluation of whether an invention is inventive or not should be based on Article 22.3 of the Patent Law, and provides general judgment methods for outstanding substantive features and criteria for judging significant progress. Regarding the judgment of outstanding substantive features, the Guidelines points out that to determine whether an invention has outstanding substantive features, it is necessary to determine whether the invention to be protected is obvious or not to a person skilled in the art compared to the existing technology. If the invention to be protected is non-obvious compared to the existing technology, it has outstanding substantive features.
In other words, during the process of responding to examination opinions, whether to modify the claims or not (i.e., add or do not add technical features), the ultimate goal for a qualified patent agent is to argue that the distinguishing technical features are non-obvious (the significant progress is easier to argue)
In this sense, what specific strategies are there to argue that the distinguishing technical features are non-obvious? This article concludes six situations and their corresponding tips, please read on.
01
In many cases where the comparative document does not disclose the distinguishing technical features of the present application, the examiner may point out that the comparative document has disclosed the distinguishing technical features of the present application. At this time, the patent agent should carefully read the contents recorded in the present application and the comparative document, compare whether the technical features of the comparative document are identical or equivalent to the distinguishing technical features of the present application, whether the technical problems solved are the same, and whether the technical effects brought about are the same. The agent should not agree with the examiner’s opinion without carefully studying the comparative document and the present application. After analysis, if the distinguishing technical features are different from the technical features of the comparative document, or if they are identical but solve different technical problems and bring about different technical effects, it cannot be considered that the comparative document has disclosed the distinguishing technical features of the present application.
02
The disclosure of a principle does not represent the disclosure of a technical solution. Similarly, when the examiner points out that the comparative document has disclosed the distinguishing technical features of the present application, the agent should carefully discern whether the comparative document (more commonly, papers, journals, etc.) has disclosed the principle of the present application or a specific technical solution. If the comparative document only discloses the principle without disclosing a specific technical solution, but it is the involved technical personnel in the field have invested creative labor in applying this principle to a specific technical solution, then the examiner cannot negate the creativity of the present application just because the comparative document has disclosed the principle.
For example, in software methods, logical judgments (yes/no) are commonly used principles. However, when the principles are applied to specific technical solutions, the examiner cannot negate the creativity of specific technical solutions. Specifically, in a navigation method, if the logical judgment result is “yes”, then go straight; if “no”, then turn right. The examiner cannot negate the creativity of this navigation method just because logical judgments (yes/no) are very common principles.
03
It’s difficult to conduct comparative analysis between two patent documents in different fields. When the examiner points out that the comparative document 2 (comparative document 1 is the closest prior art) has disclosed the distinguishing technical features of the present application, the patent agent needs to distinguish the technical fields to which comparative document 1 and comparative document 2 belong. Even if comparative document 2 does disclose the distinguishing technical features of the present application, but if comparative document 2 and comparative document 1 belong to different technical fields, technical personnel in the field will face obstacles in combining the technical features of comparative document 2 with the closest prior art (comparative document 1). Based on this, the distinguishing technical features having been disclosed before along cannot form an absolute excuse for the examiner’s negation of the creativity of the present application.
04
Reverse instructions and reverse enlightenment. Sometimes, the examiner may think that comparative document 2 (comparative document 1 is the closest prior art) provides technical enlightenment, or it is easy to imagine combining the technical features of comparative document 2 with comparative document 1 to solve the technical problem of the present application. At this point, it is necessary to analyze what technical problem the technical features of comparative document 2 solve, what technical effect they bring, and what technical enlightenment they provide. If comparative document 2 provides reverse instructions or reverse enlightenment, technical personnel in the field would not obtain the technical solution of the present application after reading comparative document 2, but another solution. Under such circumstance, the creativity of the present application cannot be negated.
05
The distinguishing technical features are not conventional means. Sometimes, the examiner may consider the distinguishing technical features as conventional means. In this case, the patent agent should point out what technical problem the present application solves, what are the conventional means in the field to solve this technical problem, and thus conclude that the distinguishing technical features of the present application are not conventional means. It is also necessary to state that if the examiner insists that they are conventional means, please provide evidence.
06
The technical solution is a whole and cannot be separated. For example, the present application includes multiple steps. If the examiner divides the multiple steps into individual technical features and evaluates them using comparative document 1, comparative document 2, comparative document 3, etc., the patent agent can respond that the technical solution of the present application should be considered as a whole and cannot be separated. The multiple steps (technical features) of the present application are interrelated and synergistic, achieving a certain effect. At the same time, it should be pointed out that technical personnel in the field have already invested creative labor in combining comparative document 1, comparative document 2, comparative document 3, etc.
The response to examination opinions is variable and flexible, and is not limited to the above situations. The response to examination opinions should be based on specific practical situations, tracing breakthrough points persistently and comprehensively. When stating opinions, clarify the viewpoint, explain the reasons, and argue logically and orderly.
Responding to examination opinions is equally important as drafting patent texts. Even if a patent text is well-written, if the patent claims are randomly modified and the statement of opinion is poorly written during the response to examination opinions, it will not only lead to the final technical solution deviating from the inventor’s original inventive concept, but also significantly narrow the scope of protection. Even if the patent is granted in the end, it will only be a piece of waste paper.
At the same time, there is the “principle of estoppel” in patent infringement determination, and the opinions stated by the patent agent in the response to examination opinions may play a crucial role in future infringement determinations. Therefore, the patent agent must be cautious and rigorous in responding to examination opinions and must not hastily respond for the sake of their salary or commission, resulting in serious loss of rights for the applicant.
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