I. Introduction

In the process of development and management of patent resources, enterprises need to enhance their quality awareness. Practice has shown that only high-quality patent resources can help enterprises achieve their objective in patent application, and succeed in implementing their patent strategy.

The development and management of patent resources can be divided into such basic phases as “selection, cultivation, employment, and retention”. In terms of cultivation, the preparation of patent application documents is one of the critical points, and quality evaluation of the above documents is a means of examination and approval of the achievements in preparing the documents, which is similar to the management of industrial product quality.

In the system of quality evaluation of patent application documents, the evaluation standard itself is of fundamental significance. This reason lies in the fact that perfect quality evaluation standard alone can make distinction between high-quality products and those unsatisfactory, i.e., between high-quality patent application documents and those that need to be improved.

The problem is that only a few Chinese enterprises are truly aware of the role played by patent resources in their survival and development, and the competition trend to change from occupying tangible resources to intangible property rights, and thus incorporate patent application into their development plan and invest heavily therein. This to a certain extent results in the difficulty in establishing perfect quality evaluation standards for patent application documents. Accordingly, opinions vary when a quality evaluation of patent application documents is conducted as people do not know what course to take. In the end, satisfactory results are always elusive.

Given this situation, this article will probe into the “quality evaluation standard for patent application documents” in the hope of helping establish such a system.

II. Establishing quality evaluation standard for patent application

Before addressing the establishment of quality evaluation standard for patent application documents, it is necessary to discuss the purpose first. Just as above mentioned, patent application documents are evaluated for ascertaining the achievements of preparation, guaranteeing the quality of presented documents, and then improving the quality of patent resources being cultivated, so as to help businesses succeed in their application for patents.

Therefore, the establishment of such a standard should take as a goal the success of the patent application.

It is generally believed that the basic objectives for a business to apply for a patent are, on the one hand, to protect its own technical achievement, sharpen its competitive edge and gain benefits from the market by taking as a lethal weapon the technical monopoly granted by the State; on the other hand, to prevent others from obtaining the patent right for a similar inventive creation, and consequently to enable the patent resources to serve as a shield in market competition.

Given this, the author takes the view that high-quality patent application documents should at least satisfy four quality evaluation standards: accurate statement of inventive creation, appropriate disclosure of relevant information, reasonably arranged technical scheme and minimum defects.

Here is the explanation of the standards. Accurate statement of inventive creation means that patent application documents should be able to clearly and integrally express the inventive creation of the inventor. Appropriate disclosure of relevant information means that patent application documents should delicately disclose the content of technology to both satisfy the requirement of adequate disclosure and appropriately hold back the technical secret; moreover, high-quality documents should reduce the possibility of competitors obtaining patent rights for technical improvement from the inspiration of the application documents, so as to enable the patent applicant to occupy a more favorable position in commercial operation.

Reasonably arranged technical scheme means that patent application documents should reasonably prescribe the scope of protection, and, once the patent right is granted, its scope of protection can not only effectively cover the alleged infringing products and methods in possible infringement disputes, and thereby reduce to the minimum the possibility of competitors evading indirect copy of the design; meanwhile, it can also clearly define the technical scheme when there is patent licensing or assignment. Minimum defects means that patent application documents should be able to successfully pass the procedure of examination and approval and obtain the patent right; once the patent right is granted, they should be able to endure the challenge raised by the claimant of invalidation in the possible invalidation procedure.
The elements of each standard are specifically discussed below.

III. Accurate statement of inventive creation

The standard of accurate statement of inventive creation is set for the technical element of the application document. The specific objects of the examination are the background technology of the specification, the specific mode of implementation and the content of the inventive creation.

Firstly, what needs to be judged is whether the processor of the application document, i.e. the provider of the original material (such as the patent agent or the patent engineer working inside the business), has a clear understanding of the intellectual property.

This is because in practice various elements might cause deviation in understanding. For example, the processor’s lack of understanding of the technical background of the inventive creation and insufficient understanding of the technical experience in the relevant field, the inventor’s lack of patent awareness or working experience in patent and inability to provide sufficient original materials needed for patent application, as well as the obstacle in communication or hindered communication between the processor and the inventor.

If the processor of application documents has a relatively clear understanding of the inventive creation, the defect of the prior art can be reasonably deduced from the content of the technology recorded in the section of the background technology, and thereby to enable the technical problems raised from this defect awaiting solution to remain logically consistent with the technical problems that will be solved by the invention recorded in the section of the content of the inventive creation; furthermore, the technical problems that will be solved by the invention are logically corresponding to the beneficial effect of the invention compared with the prior art, and this beneficial effect can be reasonably deduced from the analysis of the technical scheme of the invention, or can be corroborated by sufficient experimental results.

Secondly, judgment should be made on whether the processor of the application document has appropriately reflected the intellectual property of the invention based on thorough understanding. For instance, whether the particulars provided by the inventor are accurately and rightly expressed.

To be specific, the so-called appropriate reflection involves whether the description is clear and complete, for example, whether the technical terms are used correctly with their connotation and extension properly described; whether there is a clear and complete explanation of the components of the particulars of the product, the interaction between the components, the working principles, the steps of the method particulars, the relationship between each of the steps, the process conditions as well as other technical measures. Also involved is whether the manner of expression meets the requirement of the patent law. For example, in practice some patent application documents concerning commercial methods deals a lot with such contents as the commercial flow and commercial mode, but seldom mentions or even does not mention technical measures, and some method inventions of compounds record a lot of materials concerning the dosage of medicine and the manner of use, but do not mention such technical measures as the raw materials, the manufacture method and the process condition required for a patent application, which will provide sufficient inspiration to competitors but gain no legal protection for their own intellectual property. 

Thirdly, judgment needs to be made on whether the processor of the application documents has conducted sufficient technical expansion of the particulars. In other words, what needs to be judged is whether the processor has conducted necessary expansion of thinking on the basis of complete understanding of the original information provided by the inventor so as to expect all-round protection of the achievement of the inventor’s intellectual activities.

Specifically speaking, the aforementioned technical expansion involves whether the technical features have been equivalently substituted, i.e., whether the electric conductor aluminum can be replaced by copper or other materials; whether the technical features have been properly generalized and abstracted, i.e., whether a group of basically equivalent technical features after expansion can be generalized as upper-class technical features; whether equivalent association of the technical scheme has been conducted, i.e., whether association has been conducted between the inventor’s scheme of transmitting messages from the base station to the communication terminal and then to disposing of the message by the communication terminal, to the scheme of disposing of the massage mentioned by the base station itself and then transmitting the result of the disposition to the communication terminal.

It is found that in practice many processors of application documents have the awareness of expanding technical features, but they neglect the expansion of the technical schemes, which, according to the author, should be alarming to all involved. This is because if defects exist in the expansion of technical features, there can still be a remedy through the doctrine of equivalence in case of infringement disputes, but if there exist defects in technical schemes, the doctrine of equivalence is usually inapplicable. 

IV. Appropriate disclosure of relevant information

Under the standard of appropriate disclosure of relevant information, what is addressed is the extent of combination of technical achievement and the actual process of production. Specifically, they are mainly the background technology of the specifications, the specific mode of implementation and the content of the invention and creation.

Firstly, what needs to be judged is whether the contents recorded in the application document sufficiently disclose the inventive creation of the inventor. In other words, to judge whether the technicians in that field can implement the content recorded in the application document, i.e., whether they can implement the technical scheme of the inventive creation, solve technical problems and produce anticipated effects according to the specifications. To meet this requirement, the processor of the application document needs to have much knowledge of the actual process of production, and the patent law as well as the practice of examination in order to guarantee that the content recorded meets the requirement of sufficient disclosure. For instance, when the invention needing protection is a chemical product, the specification should disclose its confirmation, preparation and use, and not a single one of them can be omitted. Another example is that every basic technical feature should be achieved by the technicians in that field without doing creative work.  

Secondly, judgment should be made on whether the technical secret has been properly held back. The processor of the application document needs to have certain knowledge of the actual process of production, and accordingly on the basis of meeting the requirement of sufficient disclosure, divide the inventive creation into the contents of technology suitable for disclosure and those unsuitable for disclosure. To apply for patent right, he uses the technology suitable for disclosure, and at the same time reserves the technology unsuitable for disclosure in the form of technical secret. In this way, he can protect the inventive creation.

Thirdly, judgment should be made on whether room has been left over for competitors to arrange a patent application. For example, it should be examined whether some technical schemes that are insignificant to the applicant and thus are not laid out in the claims have been sufficiently disclosed in the specification to prevent competitors from obtaining patent rights for these technical schemes and to avoid the hidden troubles arising therefrom.

V. Reasonably arranged technical scheme

Under the standard of reasonably arranged technical scheme, examined is the quality of legalized transformation of the technical achievements. The specific objects of the examination are mainly the background technology of the claims and the specifications, specific mode of implementation and content of the inventive creation.

It is well-known that patent application documents are different from pure technical documents, dissertations or feasibility reports of a program. One of the remarkable features of the specifications is the combination of technology and law. On the basis of clear, complete and adequate disclosure of the inventive creation of the inventor, the technical scheme for which the applicant requires protection needs to be clarified in order to restrict the suitable scope of patent protection.

For this purpose, judgment needs to be made in the first place on whether the technical subject has been carefully laid out. Put in concrete terms, judgment should be made from the perspective of the chain of industry and commercial operation on whether the technical subject covers each of the links of the chain of industry in the actual commercial operation so as to effectively restrict the competitors, and even the downstream clients and upstream suppliers. For example, in view of the equipment invention claimed by an inventor, judgment should be made on whether the system composed of the equipment or the components composing the equipment should be enlisted for protection. Judgment also should be made, combining the provisions of the Patent Law on patent infringing conducts, on whether the selection of technical subject brings convenience for smoking out later infringers. Specifically speaking, as to the inventive creation in the category of products, the subjects that should be selected are those of which the executors of the technical schemes are relatively clear, that is to say, the manufacture, seller, offeror for sale, user and importer of the product restricted by the claims should be definite. Meanwhile, the manufacturing activity can be accomplished by a single infringer as it can make it less difficult to find out the evidence of infringement when no more subjects are involved. Similarly, such activities as sale, offering for sale, use and import can also be accomplished by a single infringer.

Secondly, judgment should be made on whether the technical problems are accurately understood. Specifically speaking, based on all the prior arts that can be obtained, judgment should be made on whether the closest prior art and the technical problems that are actually solved by the inventive creation have been determined upon differentiation of the technical features and accurate comparison, and thereby provide reasonable basis for the abstraction of the technical scheme. In addition, judgment should also be made on whether the technical problems are put into hierarchies and categorized so as to enrich the levels of the technical scheme laid out.

Thirdly, judgment should be made on whether the combination of the technical features is reasonable. To be specific, judgment should be made on whether, for the determined technical problems, technical features are divided into indispensable and dispensable ones, so as to record the indispensable technical features in independent claims, and to reasonably combine the dispensable technical features according to the objective of the application, and thus in the end form a set of well–structured, reasonably referred subordinate claims. 

Furthermore, judgment should be made on whether the claims are arranged in a certain depth. Specifically speaking, aimed at contradiction between the scope of patent protection and stability of rights, balance should be achieved between the multiple ever-changing and interrelated elements, and then the changing balance should be accommodated through the arrangement of the claims. In other words, it is hoped that a pyramidal structure of claims can be established with the scope of patent protection ranging from bigger to smaller (like a inverted pyramid) and the stability of rights correspondently changing from smaller to bigger (like a inverted pyramid). 

VI. Minimum defects

The standard of minimum defects targets whether there are defects prohibited by patent law and regulations in the application document. The specific object of the examination is the entire patent application document, including the claims, specification and attached drawings. 

Generally speaking, if an invention for which a patent application document is filed is stated accurately, the content recorded is appropriately disclosed and the technical scheme is soundly arranged, no clear substantial defects will exist in the application document. However, it is necessary to further examine the defects of the document from the opposite side, which can improve the quality of the application document and thus enable patent application documents to successfully go through the procedure of examination and approval and the procedure of invalidation. Some common writing defects should be avoided, such as formal defects like using technical terms or abbreviations that are not uniformly provided by the state, using made-up terms or nonstandard terms, unclear expression, and substantial defects like those in claims not being supported in form by the specification, inconsistent or contradicted technical schemes, etc.

VII. Summary

 Practice has shown that in the process of examining and verifying patent application documents, adoption of the aforementioned evaluation standards can objectively reflect the quality of the application document, which accordingly guarantees the quality of patent application document at the preparation stage and then guarantees a higher quality of the patent resource obtained.

In addition, adoption of the above standards can to a certain extent avoid the negative phenomenon arising from the pure ex post evaluation. Ex post evaluation refers to the situation in which some patent workers believe that the quality of the application documents can only be evaluated after the invalidation procedure or infringement suit, and it is not very significant to evaluate when it is still in composition. This view of subsequent evaluation is too passive, and is disadvantageous for the applicant to succeed with the patent application.

The above discussed the quality evaluation standards for patent application documents. As to how to correctly judge whether patent application documents meet the above-mentioned evaluation standards, other trains of thoughts are still needed. For example, what angle should be chosen to evaluate each part of the claims and specifications, and what concrete rule should be adopted in their judgment.

About the author:
    Li Wenhong is a lawyer at Unitalen Attorneys At Law, Shanghai office.

                                                                                             (Translated by Ma Jing)