The level of creativity in patent applications depends not only on the technical content of the patent application itself, but also on the mode of review used.
At present, the examiner judges that the more versatile and operative method is a three-step method: (1) determining the closest prior art; (2) determining the technical characteristics of the invention and the technical problems actually solved by the invention; (3) It is obvious to those skilled in the art to judge the claimed invention.
However, not all inventions obtained through logic analysis, reasoning or experimentation based on the prior art are obvious. It is easy for the parties to make an after-the-fact analysis based on the reading of the application documents, so that it is easy to make mistakes afterwards. It is not possible to simply use "a logical analysis, reasoning or limited experimentation through a three-step method" and arbitrarily conclude that the invention is obvious.
Since the examiner reads the application documents and the comparison documents based on the technical solution itself, the logical analysis and the reasoning that the invention points of the application documents are based on the comparison documents are obvious, and the examiner sometimes ignores the problems found and the problems raised. It is also an important indicator of judging creativity. It is wrong to conclude that the application is not creative.
Patent Prosecution Operational Procedures (Revised 2011) Practical Review Section on Creative Aspects, Section 4.1 “New Ideas or Unrecognized Technical Issues”: Knowing the technical problems to be solved by the invention is beyond the capabilities of those skilled in the art or Level, but once the problem is raised, the solution is obvious. At this time, the invention is not obvious and creative compared to the prior art.
Personally, when the documents retrieved by the examiner do not disclose the technical problems to be solved by the present invention in the prior art, the technical problems to be solved by the invention may be beyond the capabilities or level of the skilled person in the field. "This point comes up to reason.
The examiner is just blunt and creative in a three-step process. It is worth mentioning that the three-step method is only the most commonly used method in creative judgment, not the only method. For creative judgment, personal feeling should be more flexible.
Determining the technical characteristics of the difference and the technical problems actually solved by the invention is the second step in the "three-step method". It has a key role in the creative and obvious judgment and has a direct impact on the conclusion of the creative review. Due to the determination of the "technical problems actually solved by the invention", it is necessary for the examiner to comprehensively analyze the invention and the technical composition and technical effects closest to the prior art, so it is more likely to have subjective judgment errors. There are indeed some improper practices that deviate from the spirit of the "three-step law". Some of these improper practices directly lead to the incorrect conclusions of the creative review. That is to say, if in the creative review, the investigation of the technical problem is divorced, it is only one-sided attention to whether the distinguishing technical feature itself is recorded in other prior art, which will affect the correctness of the creative evaluation result.
In particular, in the second and third steps of the three-step method of creative judgment, the distinguishing technical features of the invention and the technical problems actually solved by the invention are determined, and those skilled in the art are faced with the technical problems. At the time, there is an incentive to improve the closest prior art and to obtain the claimed invention. Since the above judging step is a judging process performed after the examiner understands the present invention, the two steps themselves only consider the motivation for solving the technical problem and the technical solution adopted, but neglect to propose or discover the technical problem. The non-obviousness involved. In many cases, the difficulty of an invention is often to present or discover technical problems that, once the technical problem is clear, may be very simple or obvious to those skilled in the art. Simply applying the three-step method at this point often leads to erroneous results that are obvious to the invention.
To sum up, from the perspective of technical problems, answer the creative routine: “Technical problem answer search method”, as follows: After the technical problem is determined in step (2) of the three-step method, in step (3) When judging whether there is revelation, it is preferred to search for the technical problem and its answer determined in step (2) instead of searching for the corresponding distinguishing technical feature; if searching for the technical problem, the same or similar answer as the present invention is obtained. , it should be judged that there is revelation; otherwise, there is no direct revelation.