On 31 December, 2019 a new amendment to the Guidelines for Examination of the Chinese National Intellectual Property Administration (CNIPA) was announced. The new guidelines, which come into effect on February 1st, cover inventions with features that include an algorithm or business rules/methods. Such features are frequently found in the claims of patent applications in the field of AI, internet+, big data and block chain.
The Guidelines outline that the examination shall focus on the claimed solution, that is, the solution defined by the claims. During examination, the technical features and the algorithmic features or business rule/method features shall not be separated. Instead, all the content described in the claims shall be examined as a whole, and the technical means involved, the technical problems to be solved, and the technical effects obtained will also be considered for analysis.
The new Guideline clarifies that in order to overcome the patentability exclusion for mental activities and rules in Article 25-1 (2) of the Patent Law, a claim must include technical features in addition to algorithmic features or business rule/method features and the claim as a whole must not be solely a rule and method of mental activity.
It is further explained that the claim then must be considered to relate to a technical solution as defined in Article 2-2 of the Patent Law. In this regard “technical” means that natural law must be used for a technical problem to be solved and technical effects conforming to the natural law must be obtained. As an example, the use of an algorithm in one step of the invention to process data with a result of an exact technical meaning in the technical field is mentioned.
For examination of the novelty of an invention patent application containing algorithmic features or business rule/method features, all the features described in the claims should be considered, which include both technical features and algorithmic features or business rule/ method features. For examination of the inventiveness of an invention patent application that contains both technical features and algorithmic features or business rule/method features, the algorithmic features or business rule/method features and the technical features that functionally support each other and interact with each other should be considered as a whole. As an example, an algorithm is mentioned that according to the claim is applied to a specific technical field and can solve a specific technical problem.
The new Guideline recites 10 very instructive technical examples with proposed claim wording to further facilitate the understanding of the examination principles in the field.
Practitioners are advised to draft a patent description that indicates how the technical features and algorithmic features or business rule/method features functionally support each other, interact with each other and produce beneficial effects. The entire process of solving the technical problem should be described and explained in detail, so that specialists can implement the solution of the invention according to the content described in the description.
The description should clearly and objectively indicate the beneficial effects of the invention compared with the prior art, such as the improvement of quality, accuracy or efficiency, and the improvement of the internal performance of the system. If from the perspective of the user, the user experience is objectively improved, it can also be described in the description.
For drafting the claims, practitioners should focus on reciting technical features and algorithmic features or business rule/ method features that functionally support each other and interact with each other. Claims shall be clear and brief whilst otherwise being well supported by the description.
Spruson & Ferguson has substantial experience drafting and filing applications in AI, block chain and big data fields across the region. For more information or assistance please contact our team.