The creativity of patent application depends not only on the technical content of patent application itself, but also on the way of examination.
At present, a common and operable way for examiners to judge creativity is the three-step method: (1)Identify the closest existing technology;(2)Identify the distinguishing technical features of the invention and the technical problems the invention actually solves ;(3)Determine whether the invention requiring protection is obvious to those skilled in the field.
However, not all inventions derived from logical analysis, reasoning, or experimentation based on prior art are obvious, it is easy to make the mistake of "hindsight" after analyzing the application documents.Therefore, it is not advisable to conclude arbitrarily that the invention is obvious by simply applying the three-step method of logical analysis, reasoning, or limited experimentation.
Because the examiner read the application document and the comparison document based on the technical scheme itself to carry out logical analysis, reasoning that the invention point of the application document based on the comparison document is obvious. And examiners sometimes ignore the fact that the discovery of problems and the questions raised are themselves an important indicator of creativity, and mistakenly conclude that the application is not creative .
Section 4.1 "New Ideas or Unrecognized Technical Problems" in the Section on Creativity of the Operating Rules for Patent Examination (2011 revision) Volume of actual examination:Understanding the technical problems to be solved by the invention is beyond the ability or level of the technical personnel in the field, but once the problem is put forward, the solution is obvious. At this time, the invention is not obvious and creative compared with the prior art.
Personally, when no documents retrieved by the examiner disclose the technical problems to be solved in the existing technology, it can be argued that "the technical problems to be solved by the invention are beyond the ability or level of the technical personnel in the field".
The examiner just uses a rigid three-step method to evaluate creativity. It is worth mentioning that the three-step method is the most commonly used method of creativity judgment, not the only one, and I feel that creativity judgment should be more flexible.
It is the second step of the "three-step method" to determine the technical problems that distinguish the technical characteristics and the invention actually solves. It plays a key role in the judgment of creativity obviousness and has a direct impact on the conclusion of creativity review. The determination of "technical problems actually solved by the invention" requires the adjudicator to make a comprehensive analysis of the scheme composition and technical effect of the invention and the existing technology closest to the invention.So it is easy to make mistakes in subjective judgment. There are some improper practices deviating from the spirit of the "three-step method" in the practice of review, and some of these improper practices directly lead to the incorrect conclusion of creative review. In other words, in the process of creativity review, the correctness of the results of creativity evaluation will be affected if we only focus on that whether the technical characteristics of the distinction are recorded in other existing technologies or not, rather than the investigation of the technical issues.
In particular, in the second and third steps of the three-step method of creativity judgment, the distinguishing technical characteristics of the invention and the technical problems that the invention actually solves are determined, and the technicians in the field are motivated to improve the closest existing technology and obtain the invention requiring protection when faced with the said technical problems. Since the above judgment steps are made after the examiner has understood the invention, the two steps themselves only consider the motivation and technical solution to solve the technical problem, but ignore the non-obviousness involved in raising or discovering the technical problem.In many cases, the difficulty of an invention is to raise or find a technical problem, and once the technical problem is understood, the solution may be simple or obvious to those skilled in the field. Simply applying the three-step method at this point often leads to the obvious error of the invention.
In conclusion, the creativity routine from the point of view of technical problems :"Technical question answer search method", its approach is as follows:After identifying technical problems in step (2) of the three-step method, when judging whether there is enlightenment in step (3), the technical problems identified in step (2) and their answers should be searched first, rather than searching corresponding distinguishing technical features .If the same or similar answer to the invention is obtained when searching the technical question, it shall be judged to have enlightenment; Otherwise, there is no direct enlightenment.
