The China National Intellectual Property Administratio (CNIPA) has updated its examination guidelines to include a specific section on how the office is likely to assess patent applications directed towards new industries and new fields such as artificial intelligence (AI). A preview of the update can be found on the CNIPA website and will come into force on February 1, 2020.
Specifically, a new section 6 was added to Chapter IX of Part Two of the Guidelines for Examination. The update to the guidelines provides further clarify the examination criteria of the invention application related to new industries and new fields such as artificial intelligence, Internet plus, big data, and blockchain.
The guidelines now state that if the claimed subject-matter relates to abstract algorithms or purely commercial rules, and it does not contain any technical features, then the claim belongs to the rules and methods for mental activities stipulated in Article 25.1(2), and it should not be granted a patent. If the claim includes technical features in addition to non-technical features (algorithmic features or business rules), the claim as a whole is not a rule and method for mental activity, and it should not be excluded from patentability in accordance with Article 25.
If the claim as a whole does not fall into Article 25, it is necessary to further determine whether it belongs to Article 2.2.
When examining whether a claim containing technical and non-technical features is a technical solution, it is necessary to consider all the features described in the claim as a whole. If the claim contains the technical means in conformity with the laws of nature in order to solve the technical problem, and thus the technical effect conforming to the laws of nature is obtained, the solution defined by the claim belongs to the technical solution as provided for in Article 2.2. For example, if each step of an algorithm in a claim is closely related to the technical problem to be solved, such as the data processed by the algorithm is the data with exact technical meaning in the technical field, the execution of the algorithm can directly reflect the process of using natural laws to solve a technical problem, and technical effects are obtained, usually the solution defined in the claim is the technical solution as provided for in Article 2.2.
When examining an invention application that contains technical features and non-technical features, the technical features and the non-technical features, which functionally support and interact with the technical features, should be considered as a whole. "Functionally support and interact with" means that the non-technical features are closely combined with technical features to form technical means to solve the technical problem, and achieves the corresponding technical effects. For example, if the algorithm in the claim is applied to a specific technical field and can solve a specific technical problem, then it can be considered that the algorithm feature and the technical feature functionally support each other and interact with each other, and the algorithm feature is part of the adopted technical means, the contribution of the algorithmic features to the technical solution should be considered when evaluate the inventive step of the invention.
In an attempt to offer some specific guidance for the examination of invention applications that include algorithmic features or business rules, the CNIPA provides a few examples of how these inventions will be assessed.
The guidelines further state that the description should indicate how technical features and non-technical features (algorithmic features or business rules) mutually support and functionally interact with each other to achieve technical effects. For example, when the claimed subject-matter involves algorithmic features, the abstract algorithms should be combined with specific technical fields. The definition of at least one input parameter and its related output results should be associated with specific data in the technical field.
