The Supreme People’s Court resolved an administrative dispute over a reexamination of a patent application involving business methods, affirming that the patent application in question complies with the provisions of the eligible subject matter for patent protection as stipulated in Article 2, Paragraph 2 of the Patent Law. The case specified that in examining whether a patent application involving business methods belongs to a subject for patent protection, the reexamination should serve as the bottom line by carrying out overall consideration of the technical features and business features of the technical solution claimed in the application. Unless it is obvious that the solution does not belong to technical means, it is generally inappropriate to deem the patent application not belonging to the subject protected by the Patent Law solely because it contains non-technical contents.
This case is related to an invention patent application involving a method for sharing automatically changed values filed by two Beijing companies. Targeting the current situation where users lack motivation to share due to the existing practice of merely sharing products to social media platforms without order tracking, this application proposed a sort of group buying, which is a business approach. In this model, products’ prices are adjusted based on a deposit plus balance system and vary with the number of participants, aiming to motivate users to share.
The challenged administrative examination decision concluded that this application did not belong to the subject protected by the Patent Law and should be rejected. The first-instance court also deemed that the application did not belong to the subject protected by the Patent Law because the problem it intended to solve did not constitute a technical problem, the adopted means did not belong to technical means, and the effect was to reduce product prices by increasing the number of buyers in a group buying scenario. This approach solely promotes the sales of products, but is not a technical effect that meets with natural rules.
The applicants appealed and argued that the application belongs to the subject protected by the Patent Law on the ground that, while the patent application involving business methods has a commercial effect, the technical feature of the solution cannot be disregarded in the patent application examination merely based on some non-technical contents.
The Supreme People’s Court determined that pure business methods fall under the rules of human intellectual activities, lack technical means, do not solve technical problems or generate technical effects, and therefore do not qualify for subject matters protected by the Patent Law. However, if the business methods involved in the patent application contain technical features, the patent application may be eligible for patent law protection. The concrete judgment shall be made from the perspective of those skilled in the art, treating the solution of the claims as a whole, and comprehensively assessing whether the application employs technical means consistent with natural rules, solves technical problems, and yields technical effects. In this process, the technical and business features in the claims shall not be divided, and the application shall not be deemed as not belonging to a subject matter protected by the Patent Law merely because it contains non-technical contents and achieves beneficial commercial effects.
The business model of “group buying” in this application requests a method that automatically calculates the balance. According to the claims and description in this application, the application at least adopts information encryption and decryption techniques, bonding storage, data matching, and other technical means to solve the technical problem of determining which users place product orders through sharing information, thereby achieving the technical effect of an accurate assessment of the usage status of shared links. Therefore, the application in this case matches the judgment standards of “three elements of the subject” and belongs to the technical solution stipulated by Paragraph 2 of Article 2, Paragraph 2 of the Patent Law.
With the emergence of new technologies, new fields, and new business modes, relevant loose examination standards for patent subjects better meet the era’s demands for technical progress and economic and social developments, which also better encourages innovation entities’ creation capability. Especially with the rapid development of the digital economy, there should be a heightened focus on effectively utilizing the distinct functions of both patent subject matter examination and substantive examination. In the subject matter examination on a patent application involving business methods, the examiner shall abide by general examination standards, and in the meanwhile, the subject suitability examination serves as the bottom line, whereas in the substantive examination, examiners may follow relevant strict examination standards to correctly assess the technical contribution of the patent application by comparing them to the prior art, to determine the grant of protection and protection scope fairly and reasonably.
(2023) Zui Gao Fa Zhi Xing Zhong No. 91
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