Can the background technology in patent documents be used to evaluate novelty and inventiveness?

Table of Contents

I. Background Technology of this Patent

II. Background Technology of Patent Documents Published Before the Application Date

III. Background Technology of Patent Documents Published Between the Application Date and the Publication Date

IV. Summary

In the evaluation of novelty and inventiveness of patents, patent documents are the most common type of evidence. Typically, invention or utility model patent documents include claims, a description, and drawings. The description further includes sections on the technical field, background technology, the content of the invention or utility model, description of the drawings, and specific embodiments. In the entire invention or utility model patent document, the vast majority of the content can serve as evidence for evaluating novelty and inventiveness; only the background technology section of the description is often controversial. Whether the background technology of a patent document can be used to evaluate novelty and inventiveness requires analysis based on different circumstances.

Part 1. Background Technology of this Patent

According to the “Patent Examination Guidelines,” background technology is mainly used for comparison with the content of the invention, providing useful information for the understanding, retrieval, and examination of the invention or utility model. Other documents can be cited in the background technology section. Since the background technology is written by the inventor, and the inventor acknowledges it as background technology when comparing it to the invention or utility model, can the background technology of this patent be directly used as a prior art document to evaluate the novelty and inventiveness of this patent?

In the invalidation case of the patent “Wiring Device Suitable for Immersion-Proof Switching Power Supply,” the invalidation petitioner, a power supply company, argued that the content of the preamble to claim 1 of this patent had already been disclosed in the background technology of this patent, and the patentee had confirmed in the background technology of the specification that the relevant technical solution belonged to the prior art, and could not claim it as an innovation point of this patent during the invalidation process. At the same time, the power supply company argued that the inventor’s admission that the content recorded in the background technology was prior art constituted an admission. The State Intellectual Property Office did not support the invalidation petitioner’s claims and upheld the validity of this patent. The invalidation petitioner disagreed and filed an administrative lawsuit, which was upheld in both the first and second instance courts. In the second instance, the Supreme People’s Court pointed out that the content recorded in the background technology section of the patent specification is not necessarily technology that was already known to the public domestically or internationally before the filing date, i.e., it does not necessarily belong to the prior art. In this case, the background art of the patent specification did not cite any prior art documents with relevant technical features, and it could not be confirmed that the technical solution recorded in the background art was known to the public at home and abroad before the application date of this patent application. [1] As can be seen from the views of the Supreme People’s Court, the content recorded in the background art section of the patent specification is not necessarily prior art, nor is it necessarily not prior art. The issue questioned by the court and the State Intellectual Property Office is the time of publication of the technical content. That is to say, although the inventor knew the technical solution on the application date and recorded it in the background art section of this patent, the general public may not know the technical solution, so it is “not necessarily” prior art. So how can it be proven that it was known to the public before the application date? The views of the Supreme People’s Court above also provide guidance. For example, if prior art documents are cited in the background art, it may be considered prior art, and thus can be used for novelty and inventiveness evaluation.

Part 2 Background Art of Patent Documents Published Before the Application Date In invalidation and confirmation procedures, the use of this patent as evidence is relatively rare. The vast majority of evidence is other patent documents. Compared to the situation where the background technology of this patent is not necessarily known to the public before the application date, the background technology of patent documents published before the application date has been disclosed to the public on the publication date of the patent document, so there is no issue of publication time. Therefore, the background technology of patent documents published before the application date can usually be used to evaluate novelty and inventiveness. It should be noted that the evaluation of novelty needs to follow the principle of separate comparison. If the background technology part of the same patent document is combined with other embodiments, even if the same evidence is used, novelty cannot be evaluated, only inventiveness can be evaluated. In the invalidation case of the patent “internal circulation air heating device”, the invalidation decision made by the State Intellectual Property Office held that, based on the technical solution disclosed in the invention content and specific implementation part of the specification of Evidence 3, combined with the technical solution disclosed in the background technology part of the specification of Evidence 3 and the conventional technical means in the field, the technical solution claimed by claim 1 is obvious to those skilled in the art, and claim 1 does not have inventiveness. That is to say, the only evidence for evaluating the inventiveness of claim 1 is Evidence 3, the closest prior art is the technical solution of the invention content and specific implementation in the specification of Evidence 3, and the evidence that gives technical inspiration is the background technology part of Evidence 3 and common general knowledge [2]. In the subsequent administrative litigation proceedings, both the first and second instance courts upheld the invalidation decision and confirmed the above combination of evidence[3]. In practice, the technical solutions disclosed in the background section are often relatively brief, and most do not disclose complete technical solutions. Furthermore, the evidentiary standard for novelty evaluation is relatively high, so cases using the background section of other patent documents to evaluate novelty are not common. However, using the background section of other patent documents for inventiveness evaluation, especially as evidence of technical instruction, is quite common.

Part 3: Background Art of Patent Documents Disclosed Between the Application Date and the Publication Date Patent documents disclosed between the application date and the publication date are not prior art of this patent, but may constitute a conflicting application. Conflicting applications do not affect the inventiveness of this patent, but may affect its novelty. There is a possibility that a patent document disclosed between the application date and the publication date of this patent fully describes the technical solution claimed by the claims of this patent in its background art. This situation is relatively rare, and no relevant cases have been found, but theoretically, this possibility does exist. In this case, whether the solution described in the background art can evaluate the novelty of this patent may be controversial. From the perspective of evidence, compared to the content described in the background art of this patent, the content described in the background art of a patent document disclosed between the filing date and the publication date was disclosed no later than the publication date of that patent document, and the publication time at least meets the requirements for a conflicting application. Analogous to patent documents published before the filing date, which can be considered prior art, the solution described in the background art should also be able to evaluate the novelty of this patent.

Considering the legislative purpose of conflicting applications, one view holds that the purpose of setting up conflicting applications is to avoid duplicate patent grants. If considered from this perspective, the technical solution described in the background art is clearly not what the claims of the patent document seek to protect; therefore, there is no possibility of duplicate grants between this patent and that patent document. From this perspective alone, based solely on the content disclosed in the background art, it is unnecessary to classify that patent document as a conflicting application.

Considering the essence of the patent system, patent rights are “protection in exchange for disclosure.” In the above situation, the background art of the earlier patent application has already disclosed the technical solution and has not claimed protection; according to the “donation principle,” this technical solution has been donated to the public. It seems unfair to grant exclusive rights to the patent filed later. Furthermore, since the applicant of the earlier application already knows the technical solution disclosed in the background art, it also seems unfair that the applicant of the later application might be unable to implement the technical solution if the patent is granted. From this perspective, the technical solution disclosed in the background art in the patent document should be used as a counter-application to evaluate the novelty of this patent.

Part 4 Summary

Novelty and inventiveness evaluation are the most common legal issues in patent granting and confirmation procedures. Each invention or utility model patent document, used as evidence, includes a background art section in its specification. How to reasonably use the technical solution disclosed in the background art section is a delicate technical issue. This article analyzes the use of the background art in several situations according to the disclosure time of the background art, providing a reference for evidence retrieval in patent granting and confirmation procedures.

References:

[1] Supreme People’s Court, (2023) Supreme Court Intellectual Property Final Judgment No. 429.

[2] State Intellectual Property Office, Decision on Invalidation Request Examination No. 55776. [3] Supreme People’s Court, Administrative Judgment No. 605 of 2023.