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How to reply to the review of the negative invention patents?
Time:2019-09-19

Article 23, paragraph 3 of the Patent Law of China stipulates that: creativity means that the invention has outstanding substantive features and significant progress compared with the prior art, and the utility model has substantial features and progress.


In the reply to the notice of review, we often encounter the case that the claim 1-n does not have the inventiveness stipulated in Article 22, paragraph 3 of the Patent Law. How does the review notice usually deny the inventiveness of the claim? When we face these negative creative situations, how can we respond? In response to the above questions, the author made a simple summary, as follows:


There are several ways in which reviewers are generally used to deny creativity in review notices:


1. The related technical features in the present application are disclosed by the closest prior art reference document 1.


Usually, in the notice of review, the examiner will say that a certain technical feature described in the comparative document 1 corresponds to a certain technical feature in the present application.


2. The distinguishing technical features of this application and the comparative document 1 are disclosed by other comparative documents such as the comparison document 2.


Usually in the review notice, the examiner will say that the comparison document 2 (or other comparison document) discloses a certain technical feature of the present application and the comparison document 1, and the technical feature is in the comparison document 2 (or other comparison document). The effect is the same as that played in the present application. Comparative Document 2 (or other comparative document) gives a technical revelation that the technical feature is applied to the closest prior art document 1, that is, the comparison file 2 (Or other comparative documents) In combination with the comparative document 1, the technical solution of the present application can be obtained.


3. The distinguishing technical features of the present application and the comparative document 1 are easily conceivable, and are common knowledge or conventional technical means in the art.


In response to the above-mentioned review notice, the examiner usually uses the method of negating creativity. We must respond in a targeted manner according to their respective characteristics, specifically:


For the first point of view, we need to find the relevant technical features recorded in the comparison file 1, compare it with the technical features in this application, and see if the two technical features are the same. If it is determined that the two technical features are not the same, It belongs to two different technical features, and this technical feature constitutes the distinguishing technical feature of the present application and the comparative document 1, and the function of the distinguishing technical feature in the present application, the technical problem actually solved and the technology achieved thereby can be The effect is to elaborate on its creativity.


For the second point of view, we need to find the relevant technical features recorded in the comparison file 2, and then see whether the technical features described in the comparison file 2 are the same as the technical features in the present application, if different, the comparison file 2 The technical features in this application are not disclosed in the technical means. In this case, the answer is relatively simple. However, if the technical feature described in the comparison file 2 is the same as the technical feature in the present application, in this case, we need to determine what the technical feature is in the comparison file 2, and what is the role in the present application. That is, whether the same technical feature plays the same role in the comparison document 2 and the present application, if different, the comparative document 2 still does not disclose the technical features in the present application. If they are the same, you can only see whether there is a combined revelation between the comparison file 1 and the comparison file 2. If there is no combination of revelation, we can discuss in detail the technical personnel in the field will not think of combining the comparison files on the basis of the technical solution of the comparison document 1. 2 technical means. If there is a combination of revelation, we can further look at the technical means of comparing the document 2 in the comparison file 1, whether there is a barrier between the two.


For the third point of opinion, we can follow the thoughts of the examiner, and further look at whether the different technical features in this application can be thought of, and what technical means are easy to think of if you can't think of it. For common knowledge and conventional technical means, it can be seen whether there is such a technical means in the field. If such technical means exist, then this technical means is used to solve what technical problems are conventionally used, thereby further determining its Whether it is a routine application in the present application, whether it has reached the technical effect that cannot be achieved in the conventional routine.


In summary, after receiving the review opinion, even if the examiner believes that all the claims in this application are not creative, the inventor and the applicant do not have to worry too much. The review opinion is only the preliminary conclusion of the examiner, and does not indicate the application. There is no possibility of replying to an authorization:


(1) The review opinion issued by the examiner is not completely correct: at this time, the examiner's authorization can be persuaded by the deletion, merger or direct opinion statement of the claim.


(2) The review opinion issued by the examiner is completely correct: we can re-determine the invention point by retrieving the invention from the specification by looking up some of the contents of the program that are not listed in the claim, thereby convincing the examiner to authorize.