Part II - Strategies in Response to Non-Obviousness Requirements for Mechanical and Software Patents in the United States, China, Europe and Taiwan

Date: 15 April 2022

In Part I, we covered the comparison between non-obviousness requirements for mechanical and software patent applications in USPTO and CNIPA, and introduced an example for analysis. In this part, we continue to compare regulations in EPO and TIPO, and we further provide our comments and strategies for applicants to obtain patent rights in each country with the same patent application.

A. Steps for determining Non-obviousness

1.European Patent - EPO

EPO adopts “Problem-solution approach”1 for inventive step determination, including the following steps:

i. determining the "closest prior art",

ii. establishing the "objective technical problem" to be solved, and

iii. considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

In step ii, an EPO examiner should first determine the distinguishing technical feature between the claimed invention and the closest prior art, and then establish the “objective technical problem” to be solved based on the distinguishing technical feature. It can be understood that CNIPA adopts the similar step, which has been introduced in Part I.

Accordingly, one should notice that the objective technical problem may be different from the problem described in the specification by the applicant. Furthermore, only a “technical character” can be a basis for determination on an objective technical problem. It is a key point for EPO to decide whether the claimed invention of a software and mechanical patent application has inventive step.

On the other hand, in step ii, whether there is sufficient statement of technical effects in the specification is very important. The technical effect of each element would be a main basis for determination on the objective technical problem. If the specification lacks the description of the effect of part of the elements, when those elements serve as a distinguishing technical feature in a claim, it is possible that an EPO examiner deems that those elements provide no technical contribution with respect to the prior art, and therefore determine the claim obvious.

2.Taiwan - TIPO:

According to Chapter 3, Part 2 of the Taiwan Patent Examination Guidelines, steps for determining inventive step includes:

i. determining the scope of a claimed invention;

ii. determining the contents disclosed in relevant prior art;

iii. determining the technical levels of a person ordinarily skilled in the art;

iv. determining the differences between the claimed invention and the relevant prior art;

v. determining whether a person ordinarily skilled in the art can easily accomplish the claimed invention based on the contents disclosed in relevant prior art and common general knowledge at the time of filing.

In step v, “factors negating inventive step” and “factors affirming inventive step” should be considered:

Factors Negating Inventive Step Factors Affirming Inventive Step

Motivation to Combine Multiple References

Teaching away

(1) Relation of Technical Fields Advantageous Effects
(2) Commonality of Problems to be Solved Auxiliary Factors Considered
(3) Commonality of Operations or Functions (1) Invention Producing an Unexpected Effect
(4) Teachings or Suggestions (2) Invention Solving a Long-Felt but Unsolved Problem
Simple Change (3) Invention Overcoming a Technical Prejudice
Mere aggregation (4) Invention Achieving Commercial Success

 

For mechanical and software patent applications, a “motivation to combine multiple references” is one of the most important factors to determine the inventive step. A TIPO examiner should consider the relationship between the reference, but not between the claimed invention and the reference, to prevent a hindsight bias.

Furthermore, we can find from the above regulations that TIPO’s determination criteria is similar to a combination of JPO’s and USPTO’s, while it is quite different from EPO’s. The current Guidelines in Taiwan does not require an examiner to distinguish which element in a claim is technical, but to examine the claim as a whole. Also, the examiner may combine multiple references to prove a claim obvious. However, different from the United States, TIPO examiners usually do not combine more than three references to reject a claim in practice.

However, it should be noticed that if the patent application is a computer software invention, according to the Patent Examination Guidelines for Computer Software-Related Inventions published by TIPO in July, 2021, a “simple change” may include “features that make no contribution to the technical effects”. If the distinguishing feature between the claimed invention and the reference produces no technical effect, or it can not directly or indirectly produce any technical effect when cooperatively works with other technical effects in the claim, it may be deemed as a simple change. For example, if the distinguishing feature is only a business method itself, it may be deemed as a simple change of a common general knowledge, or a simple change of a business method stated in the prior art.

B. Example and Analysis

We compare the possible Office Action that may be issued by EPO and TIPO with the following example:

Take the case in EPO Guidelines, G-VII, 5.4.2.1 as an example. If a claim recites:

Method of facilitating shopping on a mobile device wherein:

(a) the user selects two or more products to be purchased;

(b) the mobile device transmits the selected products data and the device location to a server;

(c) the server accesses a database of vendors to identify vendors offering at least one of the selected products;

(d) the server determines, on the basis of the device location and the identified vendors, an optimal shopping tour for purchasing the selected products by accessing a cache memory in which optimal shopping tours determined for previous requests are stored; and

(e) the server transmits the optimal shopping tour to the mobile device for displaying.

1. European Patent - EPO:

First, analyze the technical features of the claim. The features contributing to the technical character are at first glance identified as a distributed system comprising a mobile device connected to a server computer which has a cache memory and is connected to a database. Other characters (e.g. the user selecting two or more products to be purchased in step (a)) are not technical features.

Next, determine the distinguishing technical feature from the closest prior art, and determine the objective technical problem based on the distinguishing technical feature. It shows the importance of the determination on the technical feature in the last step now. For example, if the difference between the claimed invention and the prior art only lies in step (a), which is merely a business concept, not a technical character and possesses no technical purpose, the step (a) produces no technical contribution over the prior art and a person skilled in the art is therefore easy to achieve the step (a). The claim would be deemed obvious when there is no other difference between the claim and the prior art.

2. Taiwan - TIPO:

The claimed invention is a computer software invention. In practice, a TIPO examiner may combine two to three references. If there is still any undisclosed feature (e.g. step (a)) after the combination of the references, the examiner may deem the undisclosed feature as a common general knowledge, or a feature that makes no contribution to the technical effects. Therefore, the claim may be indicated as a simple change of the references and is obvious to a skilled person.

Wisdom Suggested Strategies

In summary, in Europe, China and Taiwan, technical effects of features are very important that may be the key point in the non-obviousness determination. Therefore, it is advised to sufficiently describe various effects that each feature can achieve when drafting the specification. Accordingly, if there is a feature indicated as a distinguishing feature in patent prosecution, in China, the effect may be the basis of determination on the problem actually solved, and then affects the determination on whether there is relevant teaching in the prior arts. In Europe, the effect may prove technical contribution over prior arts. In Taiwan, the effect may show that the feature is not a feature making no contribution to the technical effects.

But it should also be noticed that the technical effect in the specification may cause limitation on the scope of the claims in the United States. Hence, if a patent applicantion is going to be filed in the United States, China, Europe and Taiwan at the same time, it is suggested to clearly state each effect that each embodiment or each feature may achieve, but not to state that the effect can be achieved by the invention as a whole, in order to prevent a limitation on the whole claim.

Moreover, applicants should be careful in claim drafting, especially for an EPO patent application. If the application relates to a business method, the applicant may describe some words in a technical way. For example, the word “money” may be replaced by “resources”, or “advertisement” may be replaced by “multimedia”. In this way, one may prevent the characters in a claim from being deemed as non-technical and being preclude from the determination on the objective technical problem.

[1] G‑VII, 5. Problem-solution approach - Guidelines for Examination in EPO

 

 

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