When evaluating whether to file a patent application in China, the first step is to determine if the proposed solution faces subject matter issues. Today, we will discuss the subject matter issues of invention patents in China.
The subject matter issues for utility models are covered in another article.
I: What is a Subject Matter Issue?
A subject matter issue essentially means that the technology for which a patent is being sought does not fall within the scope of patent protection in China.
Article 2, Paragraph 2 of the Chinese Patent Law (referred to as Patent Law 2.2) defines patentable inventions as: “An invention is a new technical solution proposed for a product, method, or improvement thereof.”
Can we determine the subject matter issue of an invention based on these 24 words alone? It is challenging. Even seasoned patent agents may find it difficult.
To truly understand these 24 words, one must refer to the practical guidelines used by examiners: the “Patent Examination Guidelines.”
II: How to Determine Subject Matter Issues?
The key to determining subject matter issues is to see whether the patent application pertains to a technical solution.
What is a technical solution? The “Examination Guidelines” explain a technical solution as “a collection of technical means utilizing natural laws to solve a technical problem. Technical means are usually manifested by technical features. Solutions that do not use technical means to solve technical problems to achieve effects conforming to natural laws are not considered patentable subject matter under Article 2, Paragraph 2 of the Patent Law.”
This explanation is rather abstract, so we can use the positive and negative examples provided in the “Examination Guidelines” for better understanding.
The “Examination Guidelines” provide a negative example: “A method for rebate on consumption, characterized by the following steps:
- The merchant returns a certain amount of cash coupons based on the consumption amount when the user makes a purchase.
- The merchant uses a computer to calculate the user’s consumption amount R, dividing it into M intervals, where M is an integer. The values of intervals 1 to M increase sequentially. The rebate amount F is also divided into M values, arranged sequentially from small to large.
- Based on the computer’s calculation, the rebate amount is determined according to the interval in which the user’s consumption amount falls. For instance, if the user’s consumption amount falls into interval 1, the rebate amount is the first value, and so on, returning the rebate amount corresponding to the interval to the user.”
The “Examination Guidelines” analyze this example by stating that it addresses how to promote user consumption, which is not a technical problem. The means employed involve executing a human-set rebate rule via a computer, where the rebate amount is determined based on the consumption amount, but this relationship is not governed by natural laws. Hence, it is not a technical means.
The “Examination Guidelines” provide a positive example: “A method for using shared bicycles, characterized by the following steps:
- The user sends a request to use a shared bicycle via a terminal device to the server.
- The server retrieves the user’s first location information, searches for the second location information of shared bicycles within a certain distance corresponding to the first location information, along with the status information of these bicycles, and sends this information to the terminal device. The first and second location information is obtained via GPS signals.
- The user locates an available shared bicycle based on the location information displayed on the terminal device.
- The user scans the QR code on the bicycle with the terminal device, and after server authentication, gains access to the shared bicycle.
- Based on the cycling situation, the server sends parking suggestions to the user. If the user parks the bicycle in a designated area, a discounted rate is applied; otherwise, a standard rate is used.
- The user follows the suggestions, and upon finishing the ride, locks the bicycle. The bicycle detects the locked state and sends a ride completion signal to the server.”
The “Examination Guidelines” analyze this example, stating that it addresses the technical problem of how to unlock a shared bicycle. It involves the collection and calculation of location, authentication, and other data using technical means that follow natural laws.
First, we need to understand the concept of a “technical problem.” Upon reviewing various sources, no satisfactory explanation was found. Here, I will share my personal understanding.
A technical problem should be linked to objectivity. If a problem can be solved as long as the method is implemented, it will not change based on subjective factors.
Take the negative example above: the problem of promoting user consumption lacks objectivity. The extent of promotion depends on the user’s perception of the rebate rule’s value.
Conversely, the positive example addresses the technical problem of unlocking shared bicycles. Following the described method enables users to unlock the bicycles.
Some might ask: “If users find the method cumbersome and don’t follow it, it won’t work. How is this not subjective?”
Objectivity here refers to the objective link between the normal execution of the method and the resolution of the technical problem. If the method’s normal execution solves the technical problem, the method is objective, and the problem is technical. If the method’s normal execution does not guarantee problem resolution, it lacks objectivity, and the problem is not technical.
The same rationale applies to the second concept, “technical means.” The “Examination Guidelines” define technical means as usually manifested by technical features. While understanding the definition might be challenging, practical judgment is more straightforward.
First, see if the method’s execution involves only human actions. If it does, it is not a technical means.
Next, check if there is objectivity between the method and the problem it solves. In other words, does implementing the method guarantee the problem’s resolution? If so, objectivity exists, implying conformity with natural laws.
The positive and negative examples validate this approach.
Both examples reach the second step, but the negative example fails here because executing the rebate rule does not guarantee user consumption, and thus the goal of promoting consumption is not necessarily achieved.
Therefore, innovations in the economic field must pay particular attention to subject matter issues.
Based on the interpretations of technical problems and technical means, solutions in certain technical fields can be accurately assessed for subject matter issues. However, there are some special cases. Next, let’s look at the “blacklist” of patentable subject matter in the “Patent Examination Guidelines.”
III: The Blacklist in the Patent Examination Guidelines
The first chapter of Part II of the “Patent Examination Guidelines” provides detailed provisions on “applications that are not granted patent rights.”
Some obvious situations, such as those violating social morality or harming public interests, will not be elaborated here, as these are clear upon reading the guidelines.
Our focus is mainly on situations that may cause disputes during examination or uncertainties for applicants when evaluating their patent applications. Let’s see if this article can help resolve your “dilemmas.”
Intellectual Activities or Rules
Intellectual activities or rules are not within the scope of patent protection. This is undeniable, as it fails the first step of technical means, with the execution subject being humans.
This chapter also provides examples of intellectual activities or rules, such as methods for organizing, producing, commercial practices, economic management, dictionary compilation methods, data theories or conversion methods, and statistical methods. These will not be listed exhaustively here.
Mathematical Algorithms
Data algorithms can essentially be considered a form of intellectual activity, regarded as methods of human thinking.
This is highlighted separately due to the extensive use of mathematical algorithms in the Internet and big data era. Whether such innovations can be protected by patents is highly controversial.
Now, many executions are done by computers, raising the question of whether combining computers with intellectual activities or rules (including mathematical algorithms) has subject matter issues. This is one of the key points of our discussion.
Computer Programs
Computer programming languages themselves are not patentable, as explicitly stated in the patent examination guidelines.
For instance, languages like C/C++ and Java cannot be protected by patents. Additionally, computer code cannot be patented.
But what about computer programs combined with intellectual activities or rules?
The determination of subject matter issues for computer programs combined with intellectual rules/activities has its particularities. The above understanding of technical problems and technical means may not apply.
As stated in the introduction of Chapter 9, Part II of the “Patent Examination Guidelines”: “Invention patent applications involving computer programs have certain particularities,” hence, special examination provisions are set for such cases.
Article 2 of Chapter 9, Part II of the “Patent Examination Guidelines” stipulates:
- If a claim, apart from its subject name, is limited entirely to an algorithm or mathematical calculation rule, or the program itself, or the rules and methods of a game, then the claim essentially pertains only to the rules and methods of activities and is not patentable.
- If a claim includes both the rules and methods of intellectual activities and technical features, then the claim as a whole is not considered an intellectual activity’s rule or method and should not be excluded from patentability under Article 25 of the Patent Law.
In simple terms, if the content of the claim is a mathematical algorithm, intellectual rule, or activity, we judge the subject matter issue according to those categories.
We can analyze using examples from the “Patent Examination Guidelines”:
A method for universal conversion of global languages and characters using a computer, including the following steps:
- Unifying global languages and characters by first using a consonant letter tagging method for words and then for sentences to form an auxiliary language corresponding to various input languages;
- Converting languages using the relationship between the intermediary language and the input auxiliary language, where the intermediary language is Esperanto and its auxiliary language;
- Characterized in that the tagging methods for words and sentences during input are the same as those for forming the Esperanto auxiliary language, where the word tagging method is: -m for nouns, -x for adjectives, -y for plurals, -s for numerals, -f for adverbs; the sentence tagging method is: -z for the subject, -w for the predicate, -d for the attribute, -n for the object, -b for the complement, including the predicate, and -k for the adverbial.
In this example, besides the subject involving computer execution, the content itself pertains to intellectual activities. Thus, it is not patentable.
A method for controlling the rubber molding process using a computer program, characterized by including the following steps:
- Sampling the vulcanization temperature of rubber using a temperature sensor;
- Calculating the positive vulcanization time of rubber products during the vulcanization process in response to the vulcanization temperature;
- Determining whether the positive vulcanization time has reached the specified positive vulcanization time;
- Issuing a signal to stop vulcanization when the positive vulcanization time reaches the specified positive vulcanization time.
In this example, besides the subject involving computer execution, there are technical features such as sensor sampling and computer signal sending. The content includes both intellectual activities and technical features. Thus, it is patentable.
For technologies in the field of artificial intelligence, there are additional particularities regarding subject matter issues, which will be discussed in other articles.
Diagnostic or Treatment Methods
The first chapter of Part II of the “Patent Examination Guidelines” stipulates that methods for diagnosing and treating diseases cannot be patented.
What constitutes a method for diagnosing or treating diseases? The “Patent Examination Guidelines” explain it as: the process of identifying, determining, or eliminating the cause or focus of a disease with living human or animal bodies as the direct object of implementation.
However, instruments or devices used to implement diagnostic and treatment methods, and substances or materials used in basic diagnostic or treatment methods, can be patentable.
If the method is executed by devices such as computers, should it be judged according to the logic of intellectual rules/activities mentioned above?
The recently released 2023 edition of the “Patent Examination Guidelines” includes new provisions for such technical situations, stating that if all steps of a diagnostic method are executed by a computer, it is likely to be patentable.
A separate article will introduce and interpret the provisions on the subject matter issues of diagnostic methods in the 2023 edition of the “Patent Examination Guidelines.” Stay tuned.
Summary
After reading the entire article, the subject matter issue might not be deeply understood, but at least the determination of subject matter issues for some technical solutions can be clearer.
Before applying for a patent in China, do not forget to first determine the subject matter issue. If there is indeed a subject matter issue, it does not necessarily mean it cannot be overcome. Feel free to contact us for specific guidance.