Addressing Inventiveness Objection Under The Patentability-Focused Examination Practice In China

Since early 2015, in examining patent applications for invention, examines in the State Intellectual Property Office of China (SIPO) have been more and more focusing on the patentability issues, especially inventiveness issues. For instance, with respect to claims apparently covering broad protection scope, examiners used to raise support objection that the claims were not supported by the description under Article 26.4 of the Patent Law; nowadays, in similar scenarios, examiners raise inventiveness objection under Article 22.3 of the Patent Law on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art. Also, in raising inventiveness objection, examiners usually emphasize obviousness of the claims over the prior art. This trend poses new challenge to patent attorneys and applicants. To address the inventiveness objection, practitioners may consider using the following strategies.