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Patent examination opinion reply skills

Release Time：

2022-08-10

Responding to patent examination opinions is an essential skill for a qualified patent agent. The Patent Examination Guide points out that the evaluation of invention creativity should be based on Article 22 (3) of the Patent Law, and gives a general judgment method with outstanding substantive characteristics and a significant improvement of the judgment criteria. As for the determination of outstanding material features, the Patent Examination Guide points out that the determination of whether the invention has outstanding material features is to determine whether the invention claiming protection is obvious to those skilled in the field in relation to the prior art. If the invention claiming protection is non-obvious in relation to prior art, it has outstanding substantive features.

Responding to patent examination opinions is an essential skill for a qualified patent agent. The Patent Examination Guide points out that the evaluation of invention creativity should be based on Article 22 (3) of The patent law, and gives a general judgment method with outstanding substantive characteristics and a significant improvement of the judgment criteria. As for the determination of outstanding material features, the Patent Examination Guide points out that the determination of whether the invention has outstanding material features is to determine whether the invention claiming protection is obvious to those skilled in the field in relation to the prior art. If the invention claiming protection is non-obvious in relation to prior art, it has outstanding substantive features.

In other words, in the process of reviewing the response to the opinion, whether it is to modify or not to modify the claim (that is, to add or not to add technical features), our final point is to argue that the difference between technical features is not obvious (significant progress is better to discuss). So what are the specific strategies for distinguishing technical features from non-obvious ones?

1. The comparison document does not disclose the distinctive technical features of this application

In more cases, the examiner will point out that the comparative document discloses the distinctive technical features of the application. At this time, the patent agent should carefully read the content of the application and the comparison document, compare the technical characteristics of the comparison document and the difference between the technical characteristics of the application, whether the specific is the same or equivalent, whether the technical problems solved are the same, and whether the technical effects are the same. You cannot agree with the examiner's opinion without carefully studying the documents and comparing them with this application. After analysis, the technical features of the distinction are different from the technical features of the comparison document, or the technical features of the comparison document are the same, but the technical problems solved and the technical effects brought are different, then the comparison document cannot be considered to disclose the technical features of the application.

2.Open principle does not mean open technical solutions

Similarly, when the examiner points out that the comparison document discloses the different technical characteristics of the application, the agent should carefully identify whether the comparison document (more commonly, papers, journals, etc.) discloses the principle of the application or discloses the specific technical scheme. If the comparison document only discloses the principle and does not disclose the specific technical plan, the technical personnel in the field apply the principle to the specific technical plan, and they have paid creative labor, the examiner cannot deny the creativity of the application because the comparison document discloses the principle.

For example, in the software method, logical judgment (yes/no) is usually used, and logical judgment (yes/no) is a very common principle, but applied to the specific technical scheme, the examiner can not deny its creativity. For example, in a navigation method, the logical judgment result is yes, then go straight; If not, turn right. The examiner cannot deny the creativity of the navigation method just because logical judgments (yes/no) are common principles.

3.Different fields, difficult to combine, there are barriers to combination

When the examiner points out that comparison document 2 (comparison document 1 is the closest prior art) discloses the distinguishing technical features of the application, the agent shall identify the technical field to which comparison document 1 and Comparison document 2 belong. Even if comparison document 2 does disclose the distinctive technical features of this application, if comparison document 2 and comparison document 1 belong to different technical fields, the technical personnel in this field combine the technical features of comparison document 2 with the nearest prior art (comparison document 1), and there is a combination obstacle. In other words, it is difficult for those skilled in the art to combine the technical features of contrast document 2 with the closest prior art (Contrast Document 1).

4. Reverse teaching, reverse revelation

In some cases, the examiner may consider that comparison document 2 (comparison document 1 being the closest prior art) provides technical implications, or that it is conceivable to combine the technical features of comparison document 2 with comparison document 1 to solve the technical problems of the application. At this time, it is necessary to analyze the technical characteristics of the comparison document 2 to solve the technical problem, what is the technical effect, what is the technical inspiration, if the comparison document 2 gives reverse teaching and reverse inspiration, then the technical personnel in the field can not get the technical solution of the application after reading the comparison document 2, but get another solution.

5. Distinguishing technical features is not a customary means

In some cases, the examiner will consider that the distinguishing technical features are customary means, in which case the agent should indicate what the technical problem solved by this application is, what is the customary means used in the field to solve the technical problem, and conclude that the distinguishing technical features of this application are not customary means. It should also be stated that if the examiner insists that it is customary, please provide evidence.

6.The technical solution is a whole, can not be separated

For example, the application includes a number of steps, the examiner will divide the steps into a technical feature, and then use the comparison file 1, comparison file 2, comparison file 3, etc., to evaluate the technical features of the application, this time the agent can reply, the technical scheme of the application should be regarded as a whole, and can not be separated. The multiple steps (technical characteristics) of this application are interrelated and cooperate with each other, which has the effect of XXXX. At the same time, it is pointed out that the technical personnel in the field of comparison file 1, comparison file 2, comparison file 3, etc., have themselves paid creative labor.

Responses to review comments are varied, flexible and varied, and are not limited to the above-mentioned forms. The reply to the review opinion should be combined with the specific actual situation to find a breakthrough; In the statement of opinions, make clear the point of view, explain the reason, argue, orderly answer. The author has always believed that the reply to the review opinion is as important as the writing of the patent text. A patent text is well written, but when reviewing the reply to the opinion, arbitrarily modifying the claims and writing the statement of opinion will not only lead to the final protection of the technical scheme from the inventor's original invention concept, but also greatly narrow the scope of protection, and finally lead to even if the patent is authorized, it is just a piece of waste paper. At the same time, there is a "principle of estoppel" in the determination of patent infringement, and the opinions stated by the agent in the reply to the examination opinions may play a crucial role in the determination of infringement in the future. Therefore, the agent must be careful and careful when replying to the review opinions, and must not give a hasty answer for his salary commission, so that the applicant's rights are seriously lost.

Source: Intellectual Property community

Author: Great and Magnificent

The views expressed here are those of the author and do not represent a credible position

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