A “functional technical solution” means that all or some of the limitations, as a whole, of a patent claim are to perform a specific function, which may or may not be defined in functional terms, and may be either product or process claims. In many cases, a particular function may form a solution of the technical problem, but in others, it may be a step toward the solution thereof. In patent prosecution cases, many focus on determination of inventiveness of functional technical solutions.
I. A Problem in Typical Cases
In the judicial review case on invalidation of the invention patent “A method of operating a communication system” (GaoXingZhongZi No.1264 (2013)) at the Beijing Higher People’s Court, the facts are as follows: On October 14th 2005, Nokia Siemens Networks (Nokia Siemens) filed an application with the State Intellectual Property Office (SIPO) for a patent on an invention of “A method to operate the communication system” (Application). On December 18th 2009, the Application was rejected by the SIPO on the ground that it was inconsistent with Article 22 (3) of china’s Patent Law. Nokia Siemens requested reexamination with Patent Reexamination Board, which on February 23rd 2012 issued a decision under No. 40668 upholding the rejection. Disagreeing with the decision, Nokia Siemens sought judicial review in the court. The court of first instance found that the technical solution of claim 1, in light reference 1 in combination with reference 2, obvious to a person having ordinary skill in the art, and therefore lacking inventiveness. On that basis, claims 2-8 of the Application also lack. Thus, the court of first instance decreed to sustain the PRB Decision No. 40668. Nokia Siemens appealed, by contending that the technical solution of claim 1 possessed inventiveness in light of references 1 and 2.
The Application claims: “A method of operating the network (15) and at least one terminal, said method comprising: paging to receive the circuits witched call at the terminal (10), with said terminal engaged in the packet-switched call; assessment of said network to determine the sufficiency or not of resources for establishing simultaneous operations for both the circuit-switched call and the packetswitched call; a command to be sent from said terminal to said network on the user’s preference for either receiving the circuit-switched call or for maintaining the packet-switched call, if the resources are insufficient to establish simultaneous operations for the both call types; and maintenance of continuous communication between said network and said terminal according to the command.” In light of reference 1, claim 1 contains the following distinctive feature: said terminal chooses one of the call types, when the wireless resource is insufficient and unable to establish the two call types simultaneously. In reference 1, the two call types are established simultaneously when the wireless resource is sufficient. From the above, claim 1 intends to solve the issue how to improve the flexibility of the connection of the terminal when the wireless resource is insufficient. It should be noted that claim 1 does not purport to select a call type through the said terminal, but instead talks about the possibility of the method, when the wireless resource becomes insufficient. In other words, compared with the prior art, claim 1 is different in the function rather than in any technologic means to realize the function. In the case above, in addition to the usual steps to determine the inventiveness of a patent, can we have more specific rules for the determination by considering also the characteristics of functional technical solutions?
II. Theoretical basis for determining inventiveness in functional technical solutions
In determining inventiveness of a functional technical solution, it should be first stressed that the determination be made on the claim as a whole, the comprehensive rule, by which, when determining inventiveness for invention or utility model patents, not only the technical solutions, but the technical problems they seek to solve and the technical effect thereof as a whole must be taken into consideration. This comprehensive rule of determining inventiveness has been stated in Examination Guidelines of 2001 and of 2006, as well as in Section 3.1, Chapter 4, Part II of the Patent Examination Guidelines of 2010, the previous all sustained by court in judicial practice. Under this rule, when any of the technical problems, the technical solution, or the technical effect is obvious, the subject matter as a whole may be obvious. In some instances, the subject matter as a whole may be not obvious if there is a technical problem or a function not obviously perceived by a person having ordinary skill in the art.
In determining inventiveness of a functional technical solution, it should also be stressed on the technical contribution. In fact, inventiveness of a patent means substantially its technical contributions. The subject matter sought to be patented must possess not only novelty and distinctiveness over the prior art, but also technical progress. Determination of patentable inventiveness, in some sense, is the determination of the inventor’s contribution to the technical progress, absent or inadequate which, an inventor would not deserve the exclusive patent right, for the quid pro quo of public interest. Such understanding of the patent system is not only theoretical, but is clearly stated in the statutory laws. The European Union Directive on the Patentability of Computer- Implemented Inventions (Directive) of 2002 established its position on protecting computer programs by patents. Article 4 of the Directive provides that a computer program must be inventive in order to be patentable. To qualify for the inventiveness requirement, one condition is that the computer program must contain technical contributions. From the perspective, in a functional subject matter, the inventor can contribute through discovery of technologic functions or through invention or improvement of specific technologic means. The technical solution should be understood not only from the text of the claims, but also from an insight into the conception and on that basis, the technical contribution of the inventor. If the realization of a function is obvious technically to a person skilled in the art, it indicates that no substantial contribution is made by the inventor by proposing the function. Thus, no patent can be granted. Only when technologic difficulties exist in meeting the functional need and only when the inventor provides a solution to the technologic issues or proposes another functional need that is not readily known to people skilled in the art, can we say that a substantial contribution is made and that the patent can be granted.
III. Scenarios for inventiveness determination of functional technical solutions
When determining inventiveness of a functional subject matter, that is, a subject matter presented mainly in terms of performing certain functions, in order to distinguish from the prior art, the primary distinction of the subject matter lies in whether it is the function itself or the technical means to achieve the function, in the following two scenarios: first, if the technical means to achieve the function is non-obvious over the prior art, then the subject matter as a whole is non-obvious, and inventive; second, if the technical means is obvious in light of the prior art, then the subject matter as a whole is also obvious and thus not inventive. When the primary distinction is the function rather than the technical means, the scenario will be: first, if the function already exists in the field of the art, then the subject matter as a whole is obvious; second, if the function does not exist in the field of the art, but is a necessary result or demand of the manufacturing or business development in the pertinent field, then the subject matter as a whole must also be considered as obvious; third, if the function neither exists in the field of the art, nor is a necessary result or demand of the manufacturing or business development in the pertinent field, nor can be obviously anticipated by a person skilled in the art or relevant consumers, then the subject matter as a whole is non-obvious.
IV. Applicable analysis of the case at hand
In the administrative case on the invalidation of the invention patent “A method of operating a communications system,” the court of second instance conducted an inventive analysis on claim 1, on the basis of the features of the functional technical solution and by following the thinking aforementioned. The court held that claim 1 does not describe in detail how to select a call type through the said terminal, but instead talks about the possibility of the method, when the wireless resource becomes insufficient. If the function in and by itself is obvious to people skilled in the art or results from the future trend of the related industrial sector or business, then the technical solution is obvious on the whole. In the field of communication, users naturally require selecting a call type through the terminal when the wireless resource is not sufficient enough to establish the both call types simultaneously. In claim 1, the obvious functional need rather than the technologic means to realize the function are defined. As no substantial contributions to the technology are made, claim 1 is not inventive. It is right for Decision 40668 and the judgment of the first-instance court to hold that claim 1 is not inventive. As a result, Decision 40668 and the judgment of the first-instance court are also correct in their conclusions on the non-inventiveness of other claims of the Application. Therefore, the appellant arguments of Nokia Siemens were not supported by the second-instance court.
V. Summary
The analyses above indicate that more specific rules for the determination of inventiveness are needed with respect to certain types of invention creations. For inventiveness determination of technical solutions, the first step is to find whether the main difference between the subject matter and the prior art is the function itself or the technical means to realize the function. The technical solution is obvious, if both the function itself and the technical means to realize the function are easily thought of by people skilled in the art. The technical solution may or may not be obvious when the function itself cannot be obviously anticipated, even if the technical means to realize the function are readily known. In judicial practice, the determination should be done on a case-by-case basis, by taking into account both the fundamental rules and the circumstance involved.
(Translated by Ren Qingtao)
