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Drafting of the Application Document—Background Art
Nancy SONG
Chinese Patent Attorney
Linda Liu & Partners
Pursuant to Article 2 of the Supreme People’s Court’s Judicial Interpretations (Fashi [2009] No. 21), “the people’s court shall determine the content of a claim according to the disclosure of the claim and in consideration of the understanding of the claim obtained by a person skilled in the art after reading the description and the drawings.” This provision explicitly defines the principle of eclectic interpretation of the claims. According to this principle, the interpretation of a claim is not limited to an explanation of unclear terms in this claim but further covers an explanation that broadens or narrows the scope of the terms having clear meanings based on the description and drawings, etc.
Therefore, the drafting of the application document plays a highly important role in maintaining the stability of the patent right and providing a desirable protection scope for enforcing the patent right. Furthermore, for many inventions, the applicant has to file patent applications in countries all over the world, so it is necessary to take the laws of each country into consideration during the drafting of the application document.
In practice, sufficient attention is usually paid to the drafting of important parts of the application document, such as the claims, the Summary of the Invention, and the Description of the Embodiments. The significance of the drafting of the Background Art is often neglected. However, even the indiscretion in drafting the Background Art is likely to inflict irretrievable loss upon the applicant.
Based on the patent application practice in China and by referring to the patent application practice in other countries, this article briefly explores the question of how to draft the Background Art.
1. Drafting strategies on the basis of the practice in China
Pursuant to the SIPO’s Guidelines for Patent Examination, Part II, Chapter 2, Section 2.2.3, “This part shall indicate the background art which can be regarded as useful for the understanding, searching, and examination of the invention or utility model, and when possible, cite the documents reflecting such art, especially the prior art documents which contain the technical features stated in the preamble portion of the independent claim of the invention or utility model, that is, the closest prior art document … Moreover, in this part, the problems and defects existing in the background art shall also be objectively described; however, this requirement is limited only to the problem and defect to be solved by the technical solution of the invention or utility model.”
In the actual practice in China, the applicant should mainly consider the influences of the drafting of the Background Art on the following aspects:
(1) Influence on the sufficient disclosure of the description
An invention is generally obtained on the basis of the prior art. Some technical features of the invention are known technical features in this field, while the other technical features are technical features that define a contribution over the known technology. The description usually does not explain the known technical features in detail, and even the Background Art does not mention these features.
In China, it is necessary to prevent the lack of explanations about the known technical features from causing insufficient disclosure of the description, especially when the invention belongs to the chemical field.
For example, in an invention for a preparation method in the chemical field, a known specific oxide is used as a catalyst. However, the description neither discloses the specific structure of the oxide nor discloses its source. As a result, a person skilled in the art probably does not know what type of oxide is used as a catalyst, and thus cannot carry out the invention. Even if the applicant gives a detailed explanation of the structure of the oxide after the date of filing and provides evidence to prove that the oxide is a known catalyst in this field, it is probably still impossible to overcome the defect of insufficient disclosure of the description, because there are a large number of oxides that can serve as a catalyst in the prior art and a person skilled in the art cannot determine from the disclosure of the description that the specific oxide catalyst used in the invention is the catalyst described by the applicant.
In such a case, if the Background Art includes an explanation of the oxide catalyst, or if the Background Art quotes those literatures having the technical content concerning the oxide catalyst and points out that the invention is obtained by making an improvement to the above technical content, the defect of insufficient disclosure of the description can be avoided.
Although the above specific oxide catalyst itself belongs to the prior art, it is not known that this oxide catalyst can be applied to the invention for which a patent application is filed. In the Summary of the Invention, it is preferable to explain the structure of this oxide catalyst in detail or at least point out from which part of the literatures this oxide catalyst is derived.
(2) Influence on the presence of the inventiveness
For an invention which is very approximate to the prior art and which merely makes an improvement to certain minor technical content, if the examiner searches out the most related prior art document, the examiner will believe that the invention lacks inventiveness. Under such a circumstance, even if there is data showing that the invention can achieve improved technical effects as compared with the prior art, the examiner will probably regard these technical effects as not being unexpected technical effects and thus deny the presence of inventiveness.
However, if the Background Art of the application document explains the prior art and points out the technical defects existing in the prior art (for example, a certain technical effect achieved by the prior art is not so satisfying), and if the Summary of the Invention or the Description of the Embodiments compares the technical effects of the invention with those of the prior art to show the contribution of the invention, the examiner might have preconceived ideas, and in a case where the examiner does not search out the prior art involving the improved content, the examiner might not deny the inventiveness of the invention.
(3) Influence on the interpretation of the protection scopes of the claims
As mentioned above, in China, the court shall determine the content of a claim according to the disclosure of the claim and in consideration of the understanding of the claim obtained by a person skilled in the art after reading the description and the drawings. Thus, it should be especially noted that it is necessary to prevent the disclosure of the description from improperly limiting the protection scopes of the claims.
For example, in a case where the Background Art points out that “the prior art adopts the technical feature a which causes a certain effect achieved by the prior art to be unsatisfying, whereas the invention, for which a patent application is filed, adopts the technical feature a′ to thereby improve this technical effect,” if the technical feature a′ is included in the claims, then it will be difficult for the applicant to assert that the technical feature a is equivalent to the technical feature a′ to thereby include the invention having the technical feature a into the protection scope of the claims.
In summary, how to draft the Background Art depends on the specific circumstance, and cannot follow the same pattern. For an invention which is highly inventive, it is unnecessary to elaborate too much on the prior art so as to avoid the problem that certain technical content cannot be included in the protection scope. If the examiner raises an objection against the Background Art, it is enough to make an argument or amendment when necessary. In china, the Background Art that does not disclose the content of relevant prior art will normally not cause the application to be non-patentable. However, in this case, it should be noted that a sufficient explanation of the invention should be included in the Summary of the Invention or the Description of the Embodiments so as to meet the requirement on sufficient disclosure.
For an invention which is very approximate to the prior art and which is not highly inventive, the Background Art can explain the most related prior art and compare the technical effects of the invention with those of the most related prior art so as to fully show the contribution of the invention and to prove the presence of inventiveness.
Furthermore, pursuant to the SIPO’s Guidelines for Patent Examination, Part II, Chapter 2, Section 2.2.3, “when the citation of documents satisfies the requirements that ‘for non-patent documents and foreign patent documents, the publication date shall be earlier than the filing date of the application; for Chinese patent documents, the publication date shall be no later than the publication date of the application’, the description of the application shall be regarded as having set forth the contents of the document, but if the publication date of the cited document is later than the publication date of the application, the contents of the cited document shall not be regarded as a part of the contents of the description.” It should also be noted that, pursuant to the SIPO’s Guidelines for Patent Examination, Part II, Chapter 2, Section 2.2.6, “for the convenience of examination and straightforward understanding of the invention or utility model by the public, those contents which are indispensable for the description to comply with the requirement of Article 26.3 of the Chinese Patent Law cannot be described by only reference to other documents, but shall be substantially described in the description.”
2. Referring to the practice in other countries
In order to enable the examiner to examine a patent application in a rapid and effective manner, and in order to improve the quality of the approved patent, many countries prescribe that the applicant and the relevant personnel are under an obligation to disclose information relating to the invention (especially information of the prior art) while filing a patent application.
The United States has a relatively strict requirement on information disclosure (37 C.F.R. 1.56). In the United States, violation of the provisions on information disclosure might cause the approved patent to be unable to enforce the patent right.
The Japanese Patent Law also prescribes the requirements on prior art document information disclosure (Article 36(4) (ii)). In Japan, violation of the requirements on prior art document information disclosure is regarded as a ground of rejection, instead of a ground of invalidation.
In China, there is also the provision that the applicant is under an obligation to provide the SIPO with reference materials concerning the invention (see Article 36 of the Chinese Patent Law). However, as for the consequence that the applicant shall take due to a failure to fulfill this obligation, Article 36 of the Chinese Patent Law only prescribes that the application shall be deemed to have been withdrawn in a circumstance where the examiner asks the applicant to provide documents concerning any search of the foreign counterpart application or concerning the results of the examination upon the foreign counterpart application, but said documents are not provided at the expiration of the specified time limit without any justified reason. The penalty for other circumstances is not prescribed. In practice, the examiner seldom requires the applicant to submit reference materials, and the applicant seldom takes any disadvantageous consequence due to a failure to fulfill the obligation of information disclosure.
Although the United States, Japan and China have different requirements on information disclosure, none of them requires the technical content of the prior art documents to be included in the description to fulfill the obligation of information disclosure. Even Japan, a country in which information disclosure in the Description of the Embodiments is required, only requires the description to disclose the source of the relevant technical information, but does not require which relevant technical content shall be disclosed.
In general, although different countries have different requirements on the drafting of the Background Art, all these countries on the whole require the applicant to specify the background art that is beneficial to the understanding, searching, and examination of the invention, to cite documents reflecting the background art as far as possible, and to objectively point out the problems and defects which exist in the prior art and which are solved and eliminated by the invention. In each country, the relevant requirements on the drafting of the Background Art, especially the disclosure of the technical content of the prior art, are suggestive, and thus the applicant has greater freedom when drafting the Background Art.
However, the drafted content in the Background Art might exert a significant influence on the right of the applicant, and such an influence varies from country to country.
For example, in the United States, the technology discussed in the Background Art is considered to be the Applicant’s Admitted Prior Art (AAPA). When having a doubt about patentability of an application, the examiner can directly cite the wording of the Background Art rather than further search any reference document. In China, the examiner is not allowed to directly cite the wording of the Background Art but has to use the prior art documents mentioned in the Background Part as the reference documents. On the other hand, the discussion of the prior art in the Background Art might become an obstacle for the enforcement of the right. Take the CAFC (1998) Dawn Equipment v. Kentucky Farms for example, the United States Court of Appeals for the Federal Circuit gives a verdict of non-infringement on the grounds that the patentee criticizes the prior art in the Background Art and the accused infringing product still suffers from the defects pointed out by the patentee. The same situation might occur in China.
For another example, in Japan, although the examiner also takes the improved technical effects into consideration when commenting on the inventiveness issue, the role that the improved technical effects, especially the expected technical effects, play for proving the presence of inventiveness in Japan is far less important than that in China. Hence, the drafting strategy of describing the disadvantages of the prior art in the Background Art and making a comparison between the technical effects of the prior art and those of the invention in the Summary of the Invention or the Description of the Embodiments is more effective in the patent application practice in China.
In a word, during the drafting of the Background Art, in order to determine the drafting strategies to be used, it is necessary to evaluate the influences of this part upon the factors such as the prospect of patent protection, the stability of the approved patent and the protection scope based on the actual conditions, and to refer to the relevant provisions in different countries.
I hope that the above brief discussion can be of some help to you. If you have any questions, please feel free to contact me at any time. I am very willing to discuss the drafting of the application document or any other issue in the patent practice with you.
