China Law Insight : China Business and Intellectual Property Lawyers & Attorneys : King & Wood Law Firm : IP, Arbitration, Litigation, Securities, Foreign Investment

 The terms "technology," "technical problem," "technical effect," and "technical feature" are clearly defined in the Patent Law, or the Regulations and the Guidelines. Further to Paragraph 1 of Article 2 of the Patent Law, Part II, Chapter 1 of the Guidelines for Patent Examination (2010 Edition by the SIPO) ("Guidelines") further provides that "'[i]nvention in the Patent Law means any new technical solution relating to a product, a process, or improvement thereof. ...technical means is generally embodied by technical features...a solution not employing technical means to solve a technical problem to obtain technical effects in conformity with natural law does not fall under the scope as set forth in Paragraph 2 of Article 2 of the PRC Patent Law..."

Therefore, the Guidelines instruct an applicant to first consider whether a solution provided by an invention is under the scope of Paragraph 2 of Article 2 of the Patent Law and further defines a technical solution as “a collection of technical means employing natural law to solve technical problems.” When analyzing this definition, the following should be considered. A "technical solution" should be construed to have employed 1) technical means, 2) solved technical problems, and 3) achieved technical effects in conformity with the law of nature. The entirety of the claim should be examined and analyzed to determine whether technical means are employed.

Case Study:

An umbrella with an ornamental umbrella head that features a transparent umbrella head with an airtight inner cavity, an anti-freezing aseptic liquid is encapsulated in the inner cavity of the umbrella head and a small free-flowing ornament is immersed in the liquid. The description discloses that the problem the invention intends to solve is to make the umbrella more alluring.

Case Analysis

Because the umbrella head has a three-dimensional and dynamic ornament, the present application employs technical means. On the surface, this patent application aims to solve the technical problem by making the umbrella more alluring. However, the present invention modifies the umbrella structure by employing the technical means of filling a transparent, airtight inner cavity in the umbrella head with liquid and a small ornament to solve the technical problem that displays the said ornament floating in the umbrella head. As a result, this modification achieves the technical effect that the ornament floating in the umbrella head visibly and aesthetically. On the other hand, the alluring appearance of the umbrella is merely a derivative of the visual effect of the technical solution and cannot conceal its feature in constituting the technical solutions. Consequently, the features specified in the claim form a technical solution.

The present application utilizes the umbrella head's structural feature as a technical feature. By exploiting the said technical feature with technical means, it solves a technical problem by displaying the small ornament flowing in the transparent umbrella head. Furthermore, the naturally achieved effect is a technical effect.

From this example, it can be determined that if technical means consists of technical features, its solved problem is generally a technical problem, and its achieved effect is generally a technical effect in conformity with the law of nature. Essentially, contents recited in most inventions in the art of machinery can generally constitute a technical solution so long as the technical means employed consists of technical features.

Up to the present, no unified view has been formed regarding the scope of "common knowledge" among examiners, patent attorneys and academics in China. According to the Guidelines, common knowledge refers to technical means disclosed in publicly known textbooks or reference books, including technical dictionaries or manuals, and customary means in the art to solve a particular technical problem. It is generally accepted that technical dictionaries, technical manuals and textbooks can be used as evidences for ascertainment of common knowledge. But some believe that the scope of "common knowledge" provided by the Guidelines is too broad and that many technical dictionaries, technical manuals and textbooks should not be regarded as common knowledge although they are highly specialized.

Ascertainment of Common Knowledge

Regarding ascertainment of common knowledge, the majority view is that common knowledge should be "publicly known facts". It is also an established rule that publicly known facts (also known as "prominent facts") do not need to be proved. In general, publicly known facts refer to facts that are indisputable and known to all or most people in a certain region or specialized in a particular field. However, the following elements should be taken into account when one ascertains common knowledge as publicly known facts:

Firstly, publicly known facts do not necessarily be known to the general public but must be well known to those who are specialized in a certain field in a particular temporal and spatial scope. In other words, these facts are general technical common knowledge known to those skilled in the art prior to the filing date of the patent application.

Secondly, according to evidence law, publicly known facts may be introduced into evidence by judicial notice. A court can admit judicial notice of a publicly known fact in a given lawsuit case in any procedure or phase of litigation where it believes necessary or upon the concerned party's request. Such notice is not subject to the time limit for submitting evidence.

Thirdly, where one party challenges the "common knowledge" asserted by the opponent party or confirmed by the Patent Reexamination Board, the opponent party or the Patent Reexamination Board should furnish pertinent materials and provide sufficient explanations. When one party raises opposition to a judicial notice taken by the court, the court should explain to the party the grounds on which and procedures via which the judicial notice is taken.

Fourthly, where there is counter evidence to overturn the facts confirmed through judicial notice, the party asserting the facts also needs to furnish evidence.

With regard to evidence, some think that common knowledge should be judged in accordance with knowledge of one skilled in relevant art and it is unrealistic to for the parties to adduce evidences for all common knowledge. Common sense in life does not need to be testified, nor does technical common knowledge. An exception is that the Patent Reexamination Board should bear the burden of proof when one party proves the confirmation of technical common knowledge by the Board is erroneous. Another view is that the coverage of common knowledge is wider than publicly known facts, which are not required to be testified, and the Patent Reexamination Board should only bear the burden of proof when a discrepancy exists between scopes of administrative notice and judicial notice regarding a particular fact.

Burden of Proof During Invalidation Procedures

a. A petitioner or the opponent party bears the burden of proof for its assertion that a certain technical means is common knowledge. If necessary, the Patent Reexamination Board can ask the party asserting certain technical means as common knowledge to adduce evidences.

b. Where one party explicitly raises opposition to the other party's common knowledge assertion, the challenged party bears the burden of proof.

c. The Patent Reexamination Board may ex officio introduce common knowledge in its decision-making process. But the Board may increase its burden of proof in the proceedings by doing so.

During patent prosecution or invalidation proceedings, the examiner, the applicant and the attorney should define the scope common knowledge in the art involved in the patent applicant in question from the perspective of one skilled in the art. Examining and analyzing what facts or technical means should be subject to common knowledge helps to evaluate the inventive step of a patent application in a fair and reasonable manner and avoid abuse of common knowledge in the art.