Over the past few years, China has quickly grown to be an intellectual property powerhouse. In 2016 alone, more than 1.3 million patent applications were filed in China, double the number of patents filed in the U.S.
The examination of Chinese invention patent applications follows similar rules as the U.S. examination process. For example, the invention patent application is examined based on its novelty (similar to U.S.C 102) and inventiveness (similar to U.S.C. 103). However, there are noticeable differences from the U.S. patent examination. For example, the requirement for patent eligible subject matter is much looser.
The other noticeable difference between patent examination in China from the U.S. is that the Chinese Examiners frequently reject missing features in a claim based on common knowledge, often without providing sufficient explanation or support.
In fact, the Chinese Patent Examination Guidelines require that the Examiner’s rejection based on common knowledge should be conclusive. The Guidelines even list the form of evidence (textbook, technical handbook, and technical dictionary) that can be counted as evidence for common knowledge. Unfortunately, Examiners, and sometimes even the Reexamination Board (similar to the Patent Trial and Appeal Board in the U.S.) fail to follow the strict requirement. One way to respond to such a rejection is to request that the Examiner provide evidence or explanation to support the common knowledge assertion. However, a response to an Office action without amending or further limiting the claimed scope may increase the likelihood of subsequent final rejection.
Our extensive experience in managing Chinese prosecution, including many Re-examinations before the Board, has identified several approaches that can effectively overcome a rejection based on common knowledge.
One approach is to argue that the teaching in one of the cited references conflicts with the common knowledge assertion. This often requires digging deep into the prior art. The higher the number of references, the more challenging it can be to find the magic bullet.
In another situation where all the procedures of a method were disclosed in the prior art, except not under the claimed condition. The Examiner asserted that the missing condition was common knowledge. We successfully overcame the rejection before the Board by emphasizing the advantages of the disclosed method over the prior art. For example, by implementing the procedures under the disclosed condition, adverse effect were prevented, while the prior art could only mitigate the adverse effect.