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This article deals with the question of judgment when the applicant uses an unexpected technical effect argument element to replace the creativity of the invention. First of all, a review case leads to several different points of view. It is found that the difference lies in the judgment of both expected and unexpected technical effects. And then leads to the standard of “one -way- street” of the European Patent Office in the creative judgment. After in-depth analysis of the theoretical background and rationality of this regulation, it is found that it conforms to the patent luring theory. And it coincides with the criterion of "if not" in the creative judgment; Furthermore, the specific provisions and criteria suitable for our country should be given for matters requiring attention when only unexpected technical effects are used as the basis for creativity in the invention. And they are applied in the case of the review. Finally, according to the summary of the provisions and criteria to try to give the amendment advice to Patent Examination Guidelines and Review of Operating Procedures.
Creativeness, Factor Substitution, One-way Street, Unanticipated technical effects, Patent luring theory
The Patent Examining Guidelines states in its creative judgment that “inventive creations are invented if the substitution of the elements renders the invention unforeseen technological effect”. And in the creative judgments and other factors to be considered in part, “If the invention compared with the prior art has unforeseen technical effects, you do not have to doubt whether the technical program has the salient substantive features, you can determine the inventive invention”. However, the Review of Operating Procedures stipulates that “only using unforeseen technical effects as a creative basis for inventions should be noted that the claimed invention should be limited to technical solutions that produce" unforeseen technical effects". if the technical effects resulting from the requesting protection of the technical solution also include " anticipated technical effects " , such claims are still considered to be non - inventive ". From the point of view of the legal effect and logical integrity of the Patent Examining Guidelines and the Review of Operating Procedures, the above provisions make the examiner have no legal basis in applying the restrictions in the Review of Operating Procedures. It is inconvenient to operate and difficult to convince the applicant. Through case studies and theoretical analysis, this paper straightens out the relationship between the above provisions, probes into the theoretical sources and rationality of the above provisions, and gives modification proposals and detailed judgement provisions.
Different points of view arising from a review case
The invention is called "injection vessel" and relates to an injection container which realizes the injection of the contents of the container without the external air entering the container. The container body thread engages the base cup. Thus, when the base cup is assembled, the bottom of the base cup is pressed and the slit is pushed open so that the slit can be opened reliably and easily to allow the outside air to enter between the outer layer and the inner layer.
Comparative file 1 has disclosed an injection container, base cup and container body bump card. The technical solution claimed in claim 1 of the present application is different from the content disclosed in the comparative file 1 in that: The base cup is connected with the main body thread of the container. The difference is to use the "thread connection" instead of the "bump card."
2.Several different views
There are several points of view regarding the creative aspects of this application in relation to comparative file 1:
Point (1): Comparative file 1 has been disclosed to connect the base cup to the main body of the container. However, the concave and convex joint and thread connection are the common technical means in this field, so it is easy to think of choosing "thread connection" instead of "concave and convex joint". Therefore, there is no creativity.
Point (2): Claim 1 substitute "threaded connection" instead of "concave and convex snap". This kind of substitution has obtained the technical effect that the technical personnel in this field can not predict when adopting "concave and convex card joint", that is, technical effect E1: the binding force between the base cup and the container body is increased. Technical effect E2: The process of slowly applying force can reduce the operating force required for slit opening. Although the above effect is inevitable after the substitution, but the contrast document does not give the enlightenment to realize the above mentioned effect, therefore, the claim 1 is found to be creative.
Point (3): Although the above substitution has different technical effects, once the threaded structure is applied to the container, these effects are bound to be produced. Although comparative file 1 does not give a clear indication of the use of threaded connection structures, at the same time, it does not explicitly exclude or guide the technical personnel in the field to avoid "threaded connection" for some reason. Therefore, there must be the possibility of choosing two ways without distinction, which is not related to creative labor, so it is decided that there is no creativity.
The difference between these three views lies in Point (1) mainly considering the same technical effects of substitution. Thus, it is recognized as an equivalent substitution. Point (1) taking into account the substitution has produced different technical effects. That is, unexpected technical effects, which are considered not equivalent substitutes. Point (3) . considering that there is no explicit rejection or avoidance of "threaded connections". There is no difference between using either of these two ways, so that it does not matter to be creative.
All of the above three views have taken into account the technical effects of substitution, which seems to be justified. But in the end, it came to a completely different conclusion. How did the difference in judgment come about? The reason is the diversity of technological effects. The diversity of technological effects comes from the diversity of technology itself and the differences in the expression of technological effects by inventors.
The three views above have different views on the effects of technology, leading to different views. The controversy focuses on: When the applicant argues that this unexpected technical effect does exist, whether it is necessarily creative? In the Review of Operating Procedures has the following provisions:"attention should be paid to the use of unforeseen technological effects as a basis for creativity in inventions. Inventions requesting protection should be limited to technical solutions that produce 'unexpected technical effects'. If the technical effects of the technical solution requested also include 'expected technical effects', such claims are still considered uncreative." Why do such a limit? In order to find out the source of the above mentioned regulations, we can see how and what is the theoretical background of the above mentioned problems in foreign countries.
Analysis of relevant regulations and theoretical background of EPO
Creative judgment belongs to subjective value judgment. The criterion is not only related to the cognitive level of the judgment subject, but also develops with the development of economy and technology, and is suitable for the level of economy and technology in our country. On the creative judgments of all countries have detailed provisions, we can try to find the EPO for the above issues related provisions. See if the relevant answers are given, and analyze the theoretical background and rationality of the relevant provisions.
With regard to the unanticipated technical effects of creative judgement, the EPO provides as follows:
According to the prior art, the invention will inevitably occur in a manner that has no other choice (such as one-way-street case). Then the unexpected effect at this time is only the incidental bonus effect, it can not be used as a reason for creative argument. 
EPO’s case law also provides the following jurisprudence:
In the case of T21 / 81, the Appeals Board held if it is expected to produce better results in the light of the teaching of the existing technology, it is obvious to the technical personnel of the field. So even if there are some additional effects (which may be unexpected), the claim is still not creative. 
It can be seen that the EPO states that "the invention will inevitably appear in a way that has no choice, at this time is only the incidental bonus effect, it can not be used as a reason for creative argument." In other words, EPO imposes a constraint on evaluating creativity based on unexpected technical effects. That is, the need to consider whether unexpected technical effects are accompanied by incentive effects. If an unexpected technical effect is produced in the case of an expected better effect, then there is no creativity due to this unexpected technical effect.
What is the theoretical background of this regulation? Where is its rationality? The following focuses on the theoretical background analysis of this problem.
2.Theoretical background analysis
EPO states the invention will inevitably occur in a manner that has no other choice. Then the unexpected effect at this time is only the incidental bonus effect, it can not be used as a reason for creative argument. The industry has a lot of discussion about whether this regulation should be included in the relevant regulations of our country[3-5], and both give their own views. However, the theoretical background of this regulation has not been found. The author attempts to analyze the rationality of this method of judgment from the traditional economic theory of patent law and find its theoretical background. And from this theoretical background, analysis of whether it is suitable for the relevant provisions of our country.
There is a theory of patent law economic theory called Patent Lure Theory. The Patent Lure Theory holds that: If patents are granted only to inventions that are lured by the patent system, this will produce a net social benefit. This is the Patent Lure Theory. According to this theory, patent monopoly recompense is given only to those who are genuinely tempted by the patent system to invent, for market-driven inventions, however, patents cannot be granted because this will increase social costs. In addition, from the longer term of protection of patents, it is not worthwhile to grant patents on the basis of market and commercial factors alone.
As a result, a more judicious criterion of inventive step is derived, that is, "it is not true". In the Patent Law and the Third Revision of Patent Law Implementation Details of the Special Study has been proposed:"it is recommended that, on the basis of the current revision of the programme, the creative review criteria in the Patent Examining Guidelines be skewed towards the 'it is not true '. To raise the level of invention appropriately. " The "it is not true" standard refers to the expectations and prospects of a technical programme without patent protection. It can also be proposed and implemented at the same time as the filing date or shortly after the filing date. Then it is not worthwhile to grant a patent right to the technology. In other words, technology that is expected to emerge without patent protection is not creative.
The common denominator of these theories and standards is that they agree that technology that will soon emerge because of factors such as the market is not worth patenting.
From this point of view, the standard of "one-way-street" in the judgment of reward effect by EPO has its reasonable side. From the perspective of the trend of development, the inevitable emergence of inventions. Even if there are other additional technical effects, it is only seen as an additional bonus effect, and it does not make it creative.
It can be seen that the EPO standard on the "one-way street" of the rewarding effect is in conformity with the Patent Lure Theory. By excluding emerging technologies from patent authorizations, it serves as a reasonable guide to patent applications, induces and motivates more valuable inventions. In this sense, this standard is also suitable for the rapid development of science and technology in China. The invention is beneficial to improving people ' s views on the spread of patent rights and the poor patent quality , and is beneficial to curbing the waste of patent , malicious litigation and the like to the public resources.
In addition, in fact, this view has been transformed into the Review of Operating Procedures, that is to say, the invention does not have the creativity if the technical effect which is produced only by the unexpected technical effect as the basis for the invention to be creative, if it also includes the "anticipated technical effect". But the Patent Examination Guidelines provides: If the invention has unexpected technical effect compared with the prior art, it is no longer necessary to doubt whether its technical scheme has outstanding substantive characteristics, and it can be determined that the invention is creative. It can be seen that this statement in the Review of Operating Procedures is inconsistent with the provisions of the Patent Examination Guidelines. In view of this, the author draws on the mature practice of foreign patent law mentioned above and gives some suggestions at the end of this paper.
In addition, in accordance with the provisions of the Review of Operating Procedures, it seems to be understood that invention must not be creative as long as there are unexpected technological effects while there are expected technological effects. This rule is too absolute. In contrast, the relevant provisions of EPO are more detailed and more reasonable. EPO case T227 / 89 gives a detailed method of judgment. It is necessary to judge the importance of these technical effects and the degree of concern in the related technology and application under the circumstances provided. The detailed judgment method is of great significance to our country in referring to relevant regulations. At the end of this article, it will also be summarized after the summary of the proposed changes.
According to the above analysis, the three views of the above case can be evaluated as follows.
Analysis of case views
The foregoing Point (1) considers only the same technical effect as the replaced and replaced features. That is the connection effect. Therefore, it is regarded as equivalent substitution. Because of the lack of consideration, there are also different technical effects that are difficult to be accepted by the claimant, thus damaging the claimant's interests.
Point (2) unilateral emphasis on technical effects interpreted from another perspective. There is no specific analysis of the relationship between technical effects. Simply identifying different technical effects as unexpected technical effects, without considering the existence of anticipated technical effects. In order to bring the technology that was obviously about to emerge into the scope of patent protection. To some extent, this hurts the public interest.
Point (3) considers the technical effects of both sides. But there was no positive response to the applicant's argument that his invention had "unexpected technical effects". The applicant clearly stated the special effects of the threaded connection. That is, the selection of this connection does not belong to "undifferentiated choice". The presumption of "not explicitly excluding or evading" threaded connections is a "presumption of guilt". It can not be the basis for identifying the connection mode of "no difference choice". As a result, it is also difficult to convince the applicant in this way.
The author thinks that the unexpected technical effect of the applicant's argument should be considered from many aspects.
First of all, consider all the technical effects and analyze the relationship between them, determine expected and unexpected technical effects. In this case, first distinguish between the two technical effects mentioned by the applicant. Technical effect E2 is a technical effect which is not related to connection and belongs to unexpected technical effect. And for the technical effect E1, because the thread connection has the advantage of greater adhesion and safer than the concave and convex joint, therefore, the technical effect E1 belongs to the anticipated technical effect, and it is the better technical effect expected in this field.
Second, analyze the relationship between anticipated and unexpected technical effects. Consider which technical effects are of greater concern and importance in the field. In this case, based on the practical application of the base cup and the container body, it can be determined that the technical effect E1, that is, the connection effect with high binding force, is the more concerned and important effect.
Finally, if more attention and more important effects are to be expected, then, depending on the development of existing technology, it will inevitably occur. At this time, other unexpected technological effects are only incidental to this inevitable trend, and cannot be regarded as creative because they have unexpected technical effects. In this case, the effect of the connection with large binding force is predictable. It is inevitable to replace the concave and convex cards with threaded connections. At this point, other unexpected technical effects are only incidental to this inevitable trend, it can be assumed that the invention of the case is not creative.
Specific to this case, the author tries to do the following analysis:
Claim 1 substitute "threaded connection" for "concave and convex splicing". This substitution has produced the expected better technical effects (greater cohesion). It also produces an unexpected technical effect that reduces the operational force required to break the slit. Among these two effects, we should first determine which technical effects are more concerned and desirable in the field. Based on the practical application of the base cup and container body in this case, it can be determined that the more critical and important effect is the greater bonding force. Because the thread connection obviously has the advantage of greater bonding force and more safety, according to the development of the existing technology, it is inevitable to use "thread connection" instead of "concave and convex joint". At this point, the unanticipated technical effects are only the product of this inevitable trend. It cannot be regarded as creative because of its unexpected technical effects.
Conclusion and proposition
The current Patent Examining Guidelines is not entirely consistent with the Review of Operating Procedures of unexpected technical effects and the criteria of creative judgement involved. Adaptive modifications are needed between the two. In the course of revision, the mature practices of foreign patent law mentioned above can be used for reference and introduced. Therefore, the author suggests the following changes to the Patent Examining Guidelines and Review of Operating Procedures.
In the provisions of the Patent Examining Guidelines on unforeseen technical effects, the following restrictions have been added:
Attention should be paid to the use of unanticipated technological effects as a basis for creativity in inventions. The technical effects of the technical programmers requesting protection also include "anticipated technical effects". If the invention is inevitable with the development of technology or market, it can be judged that the unexpected technological effect is only a spin-off of this inevitable trend. At this point, it cannot be regarded as creative because of its unexpected technical effects.
As to how to determine that unexpected technological effects are incidental to the inevitable trend of development, specific criteria are given in the rules of the Review of Operating Procedures:
When only unexpected technical effects are used as a basis for creativity in the invention, if there are unexpected technical effects and expected technical effects at the same time, in judging whether the unexpected technical effects are incidental products of the inevitable trend of development. Need to consider which technical effects are more concerned with the field, more important.
If the anticipated technical effects are of greater interest and importance to the field, it can be determined that: Because of this anticipated and more focused technological effect, it is inevitable that such an invention will occur as technology or market develops. At this time, the unexpected technical effect is only the incidental product, and it can not be considered creative because of its unexpected technical effect.
Conversely, if unanticipated technical effects are of greater concern, importance, or at least equally important in the field, it is impossible to determine the inevitable occurrence of the invention. At this time, the unexpected technical effect cannot be regarded as an incidental product, but it is regarded as creative because of its unexpected technical effect.
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