Guidelines for Patent Examination (“the Guidelines”) on December 31, 2019, which was a second amendment made to the Guidelines in 2019. The previous amendment, which was announced on September 23rd, 2019 and took effect on November 1st, 2019 addressed a variety of issues in patent examinations. This second amendment, in contrast, focused on one single topic, that is, examination of inventions related to new industries, such as artificial intelligence, “Internet plus1”, big data, and blockchain, and introduced a new section (i.e. Section 6) under Chapter 9 of Part II to set forth the rules for examining inventions containing algorithmic features or business rule/method features. The said amendment has taken effect on February 1, 2020.
China announced an amendment to its Guidelines for Patent Examination (“the Guidelines”)on December 31, 2019, which was a second amendment made to the Guidelines in 2019. The previous amendment, which was announced on September 23rd, 2019 and took effect on November 1st, 2019 addressed a variety of issues in patent examinations. This second amendment, in contrast, focused on one single topic, that is, examination of inventions related to new industries, such as artificial intelligence, “Internet plus1”, big data, and blockchain, and introduced a new section (i.e. Section 6) under Chapter 9 of Part II to set forth the rules for examining inventions containing algorithmic features or business rule/method features. The said amendment has taken effect on February 1, 2020.
The newly-amended Guidelines set forth the general principle for examining inventions containing algorithmic features or business rule/method features. It is provided that examination must focus on the claimed solution, i.e. the solution defined in the claims. The examiner shall not treat technical features and algorithmic features or business rule/method features in a claim, separately. Rather, he/she shall look at all content in a claim as a whole to analyze the technical means involved, technical problems to be solved, and technical effects to be achieved.
As to the examination for patentability exclusion for mental activities, the amended Guidelines clarify that if a claim includes merely abstract algorithm or business rules/methods, it constitutes “rules and methods for mental activities” as described in Article 25.1(2) of the Patent Law, and is not patentable. However, if, besides algorithmic features or business rule/method features, the claim also includes some technical features, it shall not be excluded from patentability under Article 25.1(2).
With regard to the question whether a claim that includes algorithmic features or business rule/method features constitutes a technical solution, thus fulfills the requirements of Article 2.2 of the Patent Law, the amended Guidelines stipulate that the examiner must treat all features set forth in the claim as a whole. If the claim adopts technical means that apply the laws of nature to solve a technical problem, and achieves certain technical effect that is in compliance with the laws of nature, the claim constitutes a technical solution as described in Article 2.2.
Regarding the examination of novelty of an invention containing algorithmic features or business rule/method features, the amended Guidelines stress that examiners must consider all features specified in a claim, including not only the technical features, but also the algorithmic features or business rule/method features.
For the examination of inventive step, the amended Guidelines provides that examiners must consider, altogether, the technical features in an invention and the algorithmic features or business rule/method features that functionally support or interact with the technical features. For example, if the algorithm in a claim can solve a specific technical problem in a specific technical field, it can be deemed that the algorithmic feature supports or interacts with the relevant technical features, and is part of the technical solution. The contribution made by the algorithmic feature shall be taken into consideration during the examination.
The amended Guidelines also advice on how description and claims of an invention containing algorithmic features or business rule/method features shall be drafted. It is important to clarify in the description how technical features in the invention and the algorithmic features or business rule/method features that functionally support or interact with the technical features work jointly to generate advantageous effects in comparison with prior arts. The claims should include not only the technical features of the invention, but also the algorithmic features or business rule/method features that support or interact with the technical features functionally.
Overall, the new amendment to the Guidelines has not introduced anything new. It is made in reaction to the increasing number of the invention applications involving algorithms or business rules/methods in the recent years as a result of the rapid growth of the artificial intelligence, “Internet plus” and some other industries. It aims to provide more specific guidance to the examination of applications in this field, and clarify some doubts that have emerged in practices.
- “Internet Plus” is a Chinese concept, and refers to the application of the Internet and other information technology in conventional industries, for example, Internet plus Manufacturing, and Internet plus Finance.