In November 2019, the China National Intellectual Property Agency (CNIPA) issued new patent examination guidelines for applying China's "inventive step" requirement, the patentability standard roughly equivalent to the U.S. patent requirement of "nonobviousness." Chinese Patent Law defines "inventive step" such that the invention has a prominent substantive feature and represents notable progress. See Patent Law of the People's Republic of China, Laws Regulations (Aug. 25, 2014), Under the new guidelines, inventive step can be determined as a whole from a perspective of "invention concept."

Regarding "inventive step," a three-step test has been predominantly used by Chinese examiners that includes: determining the closest prior art reference; determining distinguishing technical feature(s) of the invention and technical problems actually solved by the invention; determining whether the invention is obvious to a person having ordinary skill in the art. This three-step test is similar to the Graham v. John Deere Graham v. John Deere Co., 383 U.S. 1 (1966). criteria used to evaluate obviousness for U.S. patent claims. However, the three-step test has an inherent defect that Chinese examiners often split a claimed invention into multiple technical features and accordingly compare the technical features, one by one, with corresponding features from a prior art reference, thereby destroying the integrity of the claimed invention. Although there was certain language in the prior examination guidelines to prevent examiners from destroying invention integrity, in practice, Chinese examiners would erroneously reject many patent applications that should have been allowable. CNIPA was aware of this inherent defect of the three-step test and issued the new guidelines on Nov. 1, 2019.

In the new guidelines, the specific language was changed from "determine a problem actually solved by the invention according to the technical effect that the distinguishing feature(s) can achieve" to be "determine a technical problem actually solved by the invention according to the technical effect that the distinguishing feature(s) can achieve in the claimed invention." At the same time, the following sentence was added: "for technical features that mutually support each other and have an interactive relationship, the technical features and the relationship between them should be considered as a whole." This modification emphasizes that determining the technical problem actually solved by an invention should not only be based on a function or role of a distinguishing feature itself, but should be based on a technical effect that can be achieved by the entire invention solution through the distinguishing feature. Meanwhile, those technical features that support each other functionally and have an interactive relationship with each other should be considered as a whole when determining technical problems solved by the claimed invention.

The guidelines modifications equate to a direction that a claimed invention should be examined as a whole from a perspective of invention concept. The general meaning of the idea of ​​invention concept is that an examiner should view an invention objectively from the perspective of a person skilled in the art, proceed from the background of the invention, and compare, based on the technical problems solved by the invention solution, its solution and the technical effects as a whole with the closest prior art reference (hereinafter generically referenced as "D1") to determine whether there is an essential difference between the invention and D1. If the prior art does not teach or imply the solution of the invention, then the invention has an inventive step.

The invention concept evaluation can proceed as follows: the background of the invention → the problems existing in the background (e.g., the technical problems solved by the invention) → the technical solution to solve the technical problems → the technical effect achieved by the technical solution. The above processes correspond to the idea of "compare as a whole" in the new guidelines. In practice, differences typically may occur from the above first and second processes (that is, different backgrounds/problems to be solve between the invention and D1), which in turn may result in different technical solutions and different technical effects. Office action response strategies based on invention concept have been increasingly used in patent invalidation proceedings in China recently. So there is reason to believe that as a result of the new guidelines, more and more Office Action responses will use strategies regarding the invention concept in patent prosecution in China. In the following, four different response strategies applying invention concept are presented.

• A technical problem identified by an examiner based on the three-step test is inaccurate.

If a technical problem identified by an examiner is inaccurate, an applicant can argue that the technical problem solved by the invention should be determined from the perspective of its invention concept. As discussed above, when the examiner identifies the technical problem solved by the invention, a distinguishing technical feature may be separated from the invention solution, thereby ignoring an invention concept difference between the invention and D1. When responding, the applicant can focus on the above processes of the invention concept, and accordingly re-identify the problem solved by the invention. This response strategy can be subdivided into the following two categories:

An invention and D1 solve the same technical problem.

If technical problems solved by an invention and D1 are the same, the applicant may specifically re-identify a technical problem solved by the invention with respect to D1, rather than the same technical problem solved by both of them. For example, in Patent Invalidation Decision No. 34918 (regarding Chinese patent No. 201420749231.8) both D1 and the patent disclose chain-driven tubular motors respectively. Both motors belong to the same technical field, and share the same basic structure including a motor assembly and a chain assembly. A distinguishing technical feature focused on the specific structural differences of their clutch mechanisms. The decision concluded that the technical problem solved by the distinguishing technical feature was to provide another clutch mechanism. However, according to the specification, the problem solved by the invention was to prevent the motor from being accidentally energized and damaging the motor during the chain operation. That particular problem was solved by using an electromagnetic clutch to cut off its clutch mechanism when the power was turned off. D1 also recognized that problem and solved it by adding a manual switch to its clutch mechanism. It can be seen that the invention and D1 used two completely different solutions to solve the same problem. If the decision identified the technical problem solved by the invention as "to provide another clutch mechanism", that would not have reflected the actual difference between D1 and the invention. Accordingly, it is more accurate to re-identify the problem solved by the invention with respect to D1 as "to provide a mechanism to avoid damage to the motor when the motor is energized in another chained state." Such a re-identified technical problem solved by the invention could have led to an allowance.

An invention and D1 solve different technical problems.

If a technical problem solved by an invention is different from that solved by D1, an applicant may argue that the problem solved by the invention should be identified based on the invention concept of the invention, rather than a particular distinguishing technical feature. The technical features that are mutually supported and have an interactive relationship can be combined to identify technical problems solved and technical effects achieved. For example, an invention may solve an energy saving problem not only by one distinguishing technical feature in a claim, but also by other technical features related to the distinguishing technical feature.

• A technical problem identified by an examiner based on the three-step test is accurate.

If an applicant believes that the technical problem identified by an examiner is accurate, it can be argued that D1 does not have a particular technical problem solved by the invention, so those skilled in the art has no motivation to improve D1 along the direction of the invention. In other words, since the technical problem solved by the invention is not disclosed, taught or implied by D1, there is no motivation for those skilled in the art to improve D1 in order to overcome such a technical problem. If there is no motivation to improve D1, there is no implication of combining prior art references even if D1 might be combined with other prior art references to ultimately derive the invention. If there is no such an implication, then the invention includes an inventive step. As a prior art reference that is most closely related to the invention, D1 should not be irrelevant to the technical problem that the invention is concerned about. If D1 has nothing to do with the technical problem solved by the invention, those skilled in the art will typically improve D1 along a different direction, thereby leading to a solution different from that claimed as the invention.

For example, in the prosecution of the Chinese application No.201510747027.1, a technical problem that an electronic coded lock could be rotated by an external force in its locked state was solved. D1 disclosed a lock which had a locked structure to prevent the lock from being rotated in its lock state by an external force. According to the invention concept of D1, the lock cannot be rotated via an external force because of its locked structure. Therefore, there is no motivation for those skilled in the art to improve the lock disclosed by D1 to obtain the specific structure of the lock claimed. Although some components used for control and transmission in D1 were similar to those disclosed in the application, the invention concepts of D1 and the application were completely different.

For another example, in the Patent Invalidation Decision No. 41926 (regarding Chinese patent No. 201420682500.3), the patent disclosed an electronic cigarette which can prevent a wire of its heating part from being broken by squeezing and friction. D1 also disclosed an electronic cigarette and thermistor foil installed inside the electronic cigarette, such that the foil (that served for the wire) in D1 would not be damaged by squeezing and friction at all. Therefore, D1 had nothing to do with the technical problem solved by the patent.

• D1 and an invention contradict each other.

In some cases, D1 is so different from an invention that if an invention concept of the claimed invention is applied to D1, the solution disclosed by D1 cannot be reached. For example, in the Patent Invalidation Decision No. 31795 (regarding Chinese patent No. 200510037670.1), the patent disclosed an enamel coating made by a "high temperature process," while D1 used a "low temperature method" to process a heat-resistant inorganic bonding to form an enamel coating. The patent was different from D1 in many aspects, such as the technical field, the technical problem solved, technical solutions, and technical effects obtained. Therefore, taking D1 as a starting point and improving it into an enamel coating treatment with a "high temperature", would have been contrary to the entire invention concept of D1. Therefore, there is no motivation for those skilled in the art to improve the solution of D1 along the direction disclosed by the patent to ultimately arrive at the invention concept of the patent.

• Each element in D1 is similar to a counterpart in an invention, but as a whole, D1 is different from the invention.

In some cases, D1 might look similar to the invention if they are compared element by element (e.g., D1 comprises elements A, B and C, while the invention comprises elements A, B and C), but a different conclusion might be reached from the perspective of the invention concept. For example, in the Patent Invalidation Decision No. 82712 (regarding Chinese patent No. 200710162450.0), both the patent and D1 included monitoring, determining, and preventing steps. However, those steps in the patent as a whole were directed to a different solution than in D1. That is, each step of the patent individually might be considered as a customary means disclosed by D1, but all of the steps as a whole possessed an inventive step over the prior art. Therefore, the invention concept should be applied, and the steps defined in the patent were considered as a whole when compared with D1.

Overall, several response strategies regarding the idea of invention concept have been discussed above. It can be seen that the previously employed three-step test is "splitting" a technical solution while the invention concept focuses on an integrity of the technical solution. Which of the two is more suitable may vary based on technical fields, prior art references, technical problems to be solved, etc. In any case, the idea of invention concept may be helpful for a patent practitioner to objectively understand an invention from the perspective of its inventor so as to avoid misinterpretation in Chinese patent prosecution.

Tianlin (David) Liu serves as a technical adviser to Volpe & Koening. He brings extensive experience drafting and prosecuting patent applications to the firm in an advisory role. Previously a patent attorney in China, Liu has represented various clients in patent prosecutions, litigations, license negotiations and settlement discussions before the Intellectual Property Court of Beijing, the Patent Reexamination Board (PRB) of State Intellectual Property Office (SIPO) and SIPO.