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How to deal with assertions of common knowledge by examiners in China
Chuck WANG
Patent Attorney
Mechanical Engineering Department
Welcome to Linda Liu & Partners on air！
Here is Chuck Wang, a patent attorney in field of Machinery. I’d like to share our experiences how to deal with assertions of common knowledge by examiners in China.
In the Notifications issued by CNIPA (Chinese National Intellectual Property Administration), distinguishing features between an invention application and the closest prior art are frequently asserted as a common knowledge in the field and therefore the application is rejected as lacking inventiveness. In some cases, common knowledge will be also referred to as common sense, common technical means, and so on. But they are actually all the same.
As you might have known, one of possible reasons for such assertions lies in difficulty of retrieving a proper document from the prior art. Thus, it could be an easy way for examiners to issue rejections by concluding such distinguishing features as common knowledge. However, such comments from examiners will make applicants miserable.
Through handling many of such kind of cases, we have accumulated rich experiences. Today, we are happy to share them with you.
1) When receiving such comments, our first option is to require the examiner to provide literal evidences of common knowledge.
In Guidelines for Patent Examination in China, it is recorded that “the common general knowledge in the field cited by the examiner in the Notification of Office Action should be conclusive. If the applicant raises objection, the examiner should provide evidence to prove or justify the cited common general knowledge. In the Notification of Office Action, when determining the technical features in the claims which contribute to the resolution of the technical problem as the common general knowledge, the examiner should usually provide evidence”. That means, if the examiner insists on the assertions made in the Notification, relevant evidences of common general knowledge are necessary to be provided.
Thus, arguments by requesting literal evidences of common knowledge can be supported by provisions in Guidelines for Patent Examination. Normally, such arguments are effective against the assertion of common knowledge. In combination with other strategies below, the examiner would usually reconsider inventiveness of the application.
2) Our second option is to explain unexpected effects of distinguishing features in the whole technical solution.
We often hear from applicants that some technique features might seem simple, but they are obtained through a lot of effort and play a key role to solve difficult problems. Such improvements sometimes are hard to be protected by know-how. So, applying a patent application is a good choice.
Indeed, some distinguishing features might easily be deemed as common knowledge without considering their technical effects in the whole technique solution. This is not correct.
For example, one connection part in an invention is concluded by the examiner as only playing function of connecting member A with member B. It seems be reasonable to assert that such connection part belongs to common knowledge. However, when studying the whole technical solution, it could be found that the connection part solves a further technique problem, such as preventing the vibration problem so as to extend life of machine.
Therefore, even though some features seem to be simple, they are actually contributed to make improvements after carefully considering their roles played in the whole technique solution.
On the other hand, examiners might not be familiar with all kinds of knowledge in the field and some of them might lack of related engineering experiences. Thus, sometimes examiners could not appreciate difficulties of creativity. If possible, the applicants can consider providing physical products, photos or videos thereof and so on to help examiners to understand inventiveness of the invention. According to our practical experience, they may do a favor to convince examiners.
3) The third option is to prove commercial success of the invention
In creative judgment, commercial success is hardly to be considered by examiners as a direct basis for identifying creativity of an invention. However, it might affect examiner's testimony somehow. If the association between an invention and commercial success of its product could be established, it is helpful to convince the examiner of inventiveness of the invention. As examples, evidences of commercial success could include sales data, media evaluation of products, and literal technical approval of technology. If necessary, testimony from a technical expert or even from the inventor can be provided to strength potential effect of persuading examiners.
4) The forth option is to make a telephone communication or even an interview with examiners
The assertion of common knowledge may be established on the examiner’s subjective judgment, the reason of which may not be fully indicated in the texts of Notifications. Sometimes, it is necessary to make a call to the examiner to figure out all of his or her opinions. Before a telephone communication, sorting out our opinions and available evidences will be helpful to obtain an expected result.
The above tips are optional for responding to assertions of common knowledge by the examiner. They could be combined depending on cases. We hope that they could help you.
Feel free to contact us if you have any questions. As a leading patent law firm in China, we are always glad to help.
