Case Facts: A utility model application at hand received a review opinion under Article 26, Paragraph 3 of the Law, that is, the instructions were unclear and unusual. An insider would know at a glance that this was a death sentence for the case.

Case Facts

’s application for an utility model received a review opinion under Article 26, Paragraph 3 of the Law. That is, the instructions were unclear and of an unusual type. An insider would know at a glance that this was a death sentence for the case. rhythm.

Specifically, the examiner determined that the description of the instruction manual:

background technology is inaccurate and not objective;

technical issues are inaccurate and not objective;

existing technology defects are not objective;

technical issues are unclear (original words: unable clear); the beneficial effects of the

technical solution are unclear (original words: cannot be determined).

Based on the above-mentioned many inaccurate, unobjective and unclear determinations, the examiner concluded that according to the instructions, it cannot be determined that the technical solution of this application solves the specific technical problem and achieves beneficial effects, which falls under Article 26, Paragraph 3 of the Law. The specified description is unclear and does not meet the conditions for patent authorization (original words: there is a lack of internal logical relationship between the technical problems, technical solutions and beneficial effects of this application).

is a little confused about

. Later I learned that the State Intellectual Property Office had recently issued many such review opinions. All colleagues who received the request were scratching their heads, and generally responded that there was nothing they could do, and the result was that the case was basically dismissed.

We have proposed two response strategies to attract more attention:

is a dead horse and a living horse doctor, which is suitable for cases that have already been submitted and issued such 26.3;

is a remedy for cases that have not yet been submitted.

Treating a dead horse as a living horse

We believe that the root of the problem lies in the above-mentioned many inaccurate, unobjective and unclear determinations. The conclusion that this application does not comply with Law 26.3 is entirely based on these determinations.

However, the judgment standards and methods used by the examiner to arrive at the above-mentioned conclusion have no basis in law: they cannot be found in the regulations or the "Examination Guidelines". Even so, if the examiner can give an explanation that is consistent with scientific principles and common logic in addition to regulations and the "Examination Guidelines", that is, make sense and supplement it with supporting specific facts, the agent and the applicant will also accept. For example, when the examiner makes a determination that the technical solution does not possess inventive step, it must be based on the three-step method in the "Examination Guidelines" as the standard and method of determination, and the comparative documents as the factual basis. Present facts and make sense. Issuing review opinions is a state administrative act. When depriving or denying an applicant's rights or rights requests through this state administrative act, at least the facts and reasons must be presented, and the applicant must be given a clear explanation, right? This review opinion makes many of the above-mentioned inaccurate, unobjective, and unclear determinations. It neither presents the facts nor makes sense. If it is unclear, it will sentence the case to death.

Indeed, as the judge of life and death in a case, the examiner has a higher position. However, examiners and agents are professionals who handle patent practices and should have a minimum of respect for this industry and its professional skills. This is the most basic professionalism and quality of professionals. The examiner issued an unclear review opinion of 26.3. Didn’t he immediately conclude that the agent had written the case badly? If this opinion is indeed well-founded and it is true that the agent is not good at learning, then we must admit our defeat. And what if that's not the case? Moreover, the case is subject to the death penalty. That's not that it's not too particular, but that it's too particular. This situation, even if it means flipping the table, is not an exaggeration: the face and loss of the agent and the agency are secondary, the important thing is to safeguard the dignity of the profession and the rights and interests of the client. Of course, whether the table can be turned down or not, it is better not to turn it over. We still have to be reasonable, beneficial and disciplined in our conduct.

We plan to reply along this line of thinking. What will happen next in this case? I will report back when there is progress.

Making amends

For cases that have not yet been submitted, everyone will basically think of combining technical problems, technical defects, and beneficial effects with technical solutions to write them more clearly and fully. But the problem is not that simple.

combines technical problems, technical defects, and beneficial effects with technical solutions to write more clearly and fully, which will definitely have a good effect on ensuring authorization.However, for applicants who do not take authorization as the ultimate goal, but truly pursue high-value patents, that is, high-value protection scope, the above-mentioned approach may cause the effective protection scope of the patent to be subject to correspondingly stricter restrictions due to excessive disclosure. Improperly narrowed.

In this case, Article 26, paragraph 3, of the Law covers the following: the patented technical solution should be able to solve specific technical problems, which is a requirement for patent authorization. In addition to "unclear" in Article 26, Paragraph 3 of the Law, this requirement also involves "achievable", "necessary technical characteristics" and "not supported". The question is how to disclose technical issues well. If you answer them well, "unclear", "realizable", "necessary technical features" and "not supported" will all be accepted.

suggests that the patent specification contains similar expressions:

The technical solution of the present invention (utility model) aims at the technical problem that the existing technical solutions are too single, and provides a solution that is significantly different from the existing technical solutions. This will help reduce the negative impact of the so-called "necessary technical features" on the scope of protection of the independent rights of and , reduce the negative impact of enforceability requirements on the validity of the rights, and also weaken the direction of invention guidance. Of course, on the basis of the above technical problems and the corresponding defects of the existing technology, the agent can also appropriately disclose some more specific technical problems that are further solved by some embodiments of the present invention or utility model, as well as the improved existing technology. Corresponding defects. In the case of

, it is not so smooth for the reviewer to start from "unclear", "realizable", "necessary technical characteristics", and "not supported". They should return to creativity to talk about things.

Conclusion

is a good start, and I wish you all good luck!

Guo Bar丨Discussing the temporary protection in patents (1)

is too deep丨The patent is equivalent to infringement, the tasteless

open source project is maliciously applied for a patent and will cost 600,000 to litigate? Can

patented technology be endorsed for strollers?

sees the world from the perspective of intellectual property

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