Recently many patent applications have been rejected for failing to fall into the category of subject matters as provided by Paragraph 2 of Article 2 of the PRC Patent Law. The PRC Patent Law defines invention as, “any new technical solution relating to a product, a process, or improvement thereof.” Thus, in order to determine subject matter an applicant must determine whether their solution falls within the scope of a “technical solution”. The PRC Patent Law defines technical solution as, “a collection of technical means employing natural law to solve technical problems.”
Under Normal Circumstances
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A technical solution must employ technical means, solve technical problems and achieve technical effects. Thus, when determining subject matter the focus of analysis should be focused on whether the solution is achieved through technical means which solves technical problems and produces technical effects. This analysis must view the solution as a whole. An individual feature that solves technical problems and produces technical effect, alone, does not satisfy the subject matter requirement of PRC Patent Law. Generally, the solved problem is a technical problem if an employed technical means consists of technical features and its achieved effect is a technical effect in conformity with the law of nature.
Patent Applications in Electronics and Computer Sectors:
Patent applications in the electronics and computer sectors are governed by Part II, Chapter 9 of the Guidelines. The Guidelines state; “if a solution of a patent application relating to a computer program executes the computer program to perform control of an industrial procedure, measuring or testing procedure, process external technical data, and improve internal performances of the computer system, it is a subject matter protected in the context of the PRC Patent Law.”
In addition to the standard definition, the Guidelines provide several examples of patents that fall within the scope of the PRC Patent Law. For example, the Guidelines propose the basis for what is now known as the “Dedication Theory,” which applies to computer programs. The basis of the theory is that when determining the subject matter of a computer program application, the proposed solution shall be compared with any existing prior art. If any prior art is available, the focus of consideration shall be to determine if the solution and issues resolved are technical in nature. The key analysis in this theory is whether the solution contributes to the prior art in a technical way. In comparing the patent application to the prior art, one must consider the problem the patent is attempting to solve and whether the distinguishing features are technical in nature.
The PRC Patent Law has not yet defined “technology.” This creates a difficulty in ascertaining what a valid patent is and what is not. “If the PRC Patent Law were to strictly define terms such as “technical problem,” “technical effect,” and “technical feature,” it would drastically increase the work efficiency of patent attorneys,” said Edward E. Lehman, Managing Director of Lehman, Lee & Xu. “However, strict definitions may not be beneficial in encouraging innovation and will have adverse effects on social advance,” Lehman added.