Subject Matter Problem
The subject matter of a patent is also referred to as the protecting object for patents in China.
If a patent has the problem of subject matter, it means that the invention for which a patent is applied for falls under the subject matters for which no patent right shall be granted. Specifically, the subject matters are not in accordance with the relevant rules of the Chinese Patent Law and the Guidelines for Patent Examination (the Guidelines).
Subject Matters Under Patent Protection
According to Article 2 of the Patent Law, “invention-creations” that can be protected by a patent include inventions, utility models and designs. “Invention” means any new technical solution relating to a product, a process or improvement thereof, and “utility model” means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use.
From the above definitions, we can see that both of an invention and a utility model protect technical solutions. And if what we seek for patent protection does not belong to technical solutions, we may meet the problem of subject matter. We will talk more about the subject matter problem from the perspective of “technical solution” in the following part.
Technical Solution (in Article 2.1.2 of the Guidelines)
1) A technical solution is an aggregation of technical means applying the laws of nature to solve a technical problem. Usually, technical means are embodied as technical features.
A solution that does not adopt technical means to solve a technical problem and thereby does not achieve any technical effect in compliance with the laws of nature does not constitute a subject matter as defined in Article 2.2 of the Patent Law.
2) Smell, signal such as sound, light, electricity, magnetism, and wave, or energy does not constitute a subject matter as provided in Article 2.2 of the Patent Law. However, patent applications in which its nature is utilized to solve a technical problem can be excluded as above.
Thus it can be seen that subject matters protected by the Patent Law should belong to technical solutions. Elements of technical solutions include:
- Technical means
- Technical features
- Laws of nature
- Technical problem
- Technical effect
To determine whether a subject matter belongs to a technical solution, we may refer to above elements. None of the elements is dispensable.
Subject Matters Not Under Patent Protection
In the Patent Law
According to the paragraph 1 of Article 5, no patent right shall be granted for any invention-creation that is in contrary to the laws or social morality or that is detrimental to public interest.
According to the paragraph 2 of Article 5, no patent right shall be granted for any invention-creation where acquisition or use of the genetic resources, on which the development of the invention-creation relics, is not consistent with the provisions of the laws or administrative regulations.
In the Guidelines
In the Guidelines, the following contents cannot be protected when filing patents in China:
- Scientific discoveries
Scientific discoveries are different from the technical solutions of reforming the objective world, they are not invention-creations as referred to in the Patent Law and therefore cannot be granted patent rights.
- Rules and methods for mental activities
Rules and methods for mental activities are rules and methods governing people’s thinking, expression, judgment, and memorization. Because they do not use technical means or apply the laws of nature, nor do they solve any technical problem or produce any technical effect, they do not constitute technical solutions. For example, traffic rules, grammar of various languages, short-cut arithmetic methods and relevant pithy formulae, methods of psychological test, rules and methods of various games or entertainment, music book, food recipes, chess manuals, computer programs, etc.
- Methods for diagnosis or for treatment of diseases
Methods for diagnosis or for treatment of diseases are practiced directly on living human or animal bodies, and are not susceptible to industrial application. Therefore, this kind of method shall not be granted patent rights.
However, medicine or medical devices can be subject matters for patent application.
- Animal and plant varieties
However, patent right may be granted for processes used in producing animal and plant varieties.
- Method of nuclear transformation and the substances obtained therefrom
- For designs of two-dimensional printing goods, made of patterns, colors or their combination, which serve mainly as indicators, no patent right shall be granted.
It can be seen that, except for some special cases (for example, the objects are living bodies), most of the subject matters not under patent protection listed in the Guidelines are judged from the perspective of technical means and technical problems.
Subject Matters of Utility Model Patents in China
From the above content, we know that the subject matter of a utility model and an invention should be a technical solution. However, a utility model has stricter requirements regarding the subject matter.
A utility model only protects a product, namely, an entity that is produced by an industrial method and occupies spaces. Thus, when determining whether a utility model has the problem of subject matter, the examiner will consider not only whether the subject matter belongs to a technical solution, but also whether it belongs to a product. For a more detailed explanation, you may refer to another article: Protectable Subject Matters of Utility Model Patents and Invention Patents in China.
Subject Matter Problems in Some Special Fields
Inventions related to computer program
According to the Guidelines, an invention application relating to a computer program is the subject matter of patent protection only if it constitutes a technical solution. If the solution of an invention application relating to computer programs involves the execution of computer programs not in order to solve technical problems, or does not reflect technical means in conformity with the laws of nature by computers running programs to control and process external or internal objects, or the effect obtained is not restrained by the law of nature, the solution is not the subject matter of patent protection.
Generally speaking, if a computer program relates to mental activities, it may have the problem of subject matters. The Guidelines explains the situations which belong to mental activities.
(1) If a claim merely relates to an algorithm, or mathematical computing rules, or computer programs per se, or computer programs recorded in mediums, or rules or methods for games, etc.
(2) Chinese character encoding method and Chinese character inputting method for computers
Example 1 (from the Guidelines)
A general transition method for global language characters by computers, which includes the following steps:
Forming corresponding auxiliary language of the input language by first using consonant word-notation, then consonant sentence-notation uniformly after words;
Completing language transition using the corresponding relationship between inter-language and auxiliary language of the input language, and the said inter-language are Esperanto and Esperanto auxiliary language;
Characterized in that the said methods for word-notation and sentence-notation of input language are the same as those of forming Esperanto auxiliary language, the said word-notation method is: -m means noun, -x means adjective, -y means plural, -s means quantifier, -f means adverb; the said sentence-notation method is: -z means subject, -w means predicate, -d means attribute, -n means object, -b means complement including predicative, and –k means adverbial modifier.
Analysis and conclusion
Although the title of the subject matter of this solution includes computer, all the contents thereof merely realize unified translation transition for global languages by unified translation inter-language and regulating the input rules for global language characters artificially. The solution is not an improvement of the machine translation, and does not embody the improvement of the combination between intrinsic objective language characteristics of different languages and the computer technology in the machine translation, but relates to the re-regulation and re-definition of the transition rules for language characters based on the inventor’s own subjective understanding, and merely embodies the unifying of the corresponding relationship between the auxiliary language of the input language and the inter-language into the word-notation and sentence-notation rules of the Esperanto auxiliary language, thus is essentially rules and methods for mental activities as provided in Article 25.1(2) of the Patent Law, and is not the subject matter of patent protection.
Example 2 (from the Guidelines)
A method of measuring liquid viscosity using computer programs characterized in that it includes the following steps:
Determining suitable rotating speed for sensor rotor through preset parameter signal processing program in terms of liquid type;
Starting the sensor rotor and making it shear rotate in the liquid at the said rotating speed by the sensor rotor control program, and converting liquid sticky resistance value detected by the sensor rotor into circuit signal;
Calculating the liquid viscosity basing on the said circuit signal by sensor rotor signal processing program, and sending the calculated viscosity value to the LCD for display, or sending it to the production control center through communication ports.
Analysis and conclusion
This solution is a method for measuring liquid viscosity. What it solves is the technical problem on how to improve the speed and accuracy of liquid viscosity measurement. The solution is a method by which liquid viscosity measuring process is controlled through execution of computer programs. What it reflects is the automatic control over the sensor rotor working process, including selection of sensor rotor rotating speed, starting running status, etc., the process of collected technical data processing, and the process of displaying measuring result. What it utilizes is the technical means in conformity with the laws of nature, and what is obtained is the technical effect of the real-time measurement of liquid viscosity on site, and the improvement of speed and accuracy of liquid viscosity measurement. Therefore, this invention application is a solution realizing measurement or testing process control through execution of computer programs, which belongs to the technical solutions as provided for in Article 2.2 and is the subject matter of patent protection.
It should be pointed out that with the development of artificial intelligence (AI) technology, innovations relating to AI models increase rapidly. AI models may face the problem of subject matters as well. With respect to the subject matter problems of AI field as well as the preventive measures, we will make detailed discussion in another article.
Inventions of the chemical field
The Guidelines set forth provisions on applications for chemical invention for which no patent right shall be granted:
(1) Natural substance. A substance, found in the nature and existing in its natural state, is merely an object of discovery in the sense of the “scientific discoveries” as provided for in Article 25.1(1) of the Patent Law, and no patent right shall be granted for it.
(2) Medical-use of substances. As the medical-use of a substance is a use for the diagnosis or treatment of disease, it falls into the situations provided for in Article 25.1(3) of the Patent Law; hence, it shall not be granted the patent right.
Generally speaking, if patent applications of the chemical field have the problem of subject matters, the applications may belong to “scientific discovery”, or its execution objects are “living bodies”.
How to Avoid the Problem of Subject Matter?
As is explained above, there are six common types of subject matters that are not under patent protection according to the Guidelines. If the technical solution belongs to type 1, 3, 4, 5 and 6, we suggest not to file the patent application.
If an invention involves mental activities, it may not have the problem of subject matter.
We mentioned in the previous part that rules and methods for mental activities may not be protected by a patent. However, in this respect, the Guidelines also points out that when determining whether claims covering algorithm features, business rules or method features belong to technical solutions, the examiner should consider all the features recorded in the claims as a whole.
If the technical means adopted to solve a technical problem are in accordance with the laws of nature, and the technical effect achieved is in conformity with the laws of nature, then the technical solution recorded in the claims belongs to the technical solution specified in the Article 2 of the Patent Law. For example, if the procedures of an algorithm recorded in the claims are closely related to the technical problem that needs to be solved, the data processed by the algorithms are data with specific technical meanings of the technical field, and the execution of the algorithms can directly reflect the process of solving a technical problem by the laws of nature, and the process achieves technical effect, then the technical solution recorded in the claims belongs to the technical solution specified in the Article 2 of the Patent Law.
Therefore, it is not that we cannot apply for a patent application as long as the claims involve mental activities. We should examine the claims as whole. We may apply for a patent application if the following requirements are satisfied: the solution sought for patent application solves a technical problem; the claims include not only mental activities, but also technical means in conformity with the laws of nature; and the technical means are directly related to the technical problems to be solved.
Example (from the Guidelines)
A method of using a shared bicycle, comprising the following steps:
Step 1, a user sending a request for the use of shared bicycles to a server through a terminal device;
Step 2, the server obtaining the first location information of the user, searching for the second location information of the shared bicycles within a certain distance corresponding to the first location information, and the status information of these shared bicycles, the location information and status information being sent to the terminal device, wherein the first location information and the second location information are obtained through GPS signals;
Step 3, the user finding a target shared bicycle that can be ridden according to the location information of the shared bicycle displayed on the terminal device;
Step 4, the user scanning the QR code on the body of the target shared bicycle through the terminal device, and after passing the server authentication, obtaining the permission to use the target shared bicycle;
Step 5: the server pushing a parking reminder to the user according to the riding situation, wherein if the user parks the bicycle in the designated area, the preferential tariff will be used for billing, otherwise, the standard tariff will be used for billing;
Step 6, the user selecting a parking place according to the prompt, when the ride ends, the user performing a lock action of the shared bicycle, and the shared bicycle sending a ride completion signal to the server after detecting the lock state.
This solution involves a method of using shared bicycles, and the technical problem to be solved is how to accurately find the location where the shared bicycles can be ridden and start the shared bicycles. The control and guidance of the user’s behavior of using shared bicycles reflect the location information, authentication, etc.
The control of data collection and calculation uses technical means that follow the laws of nature, and achieve technical effects such as accurately finding the position of the shared bicycle that can be ridden and opening the shared bicycle. Therefore, the solution of the invention patent application belongs to the technical solution stipulated in the second paragraph of Article 2 of the Patent Law and is the subject matter of patent protection.
To sum up, when drafting patent applications or preparing OA responses, we should consider the key elements of technical solutions in order to overcome subject matter rejection. The key elements of a technical solution include technical means, technical problems, and technical effects. And the technical means should include two elements: in conformity with the laws of nature and technical features. The so-called “in conformity with the laws of nature” means that the laws of the means belong to the prior art, for example, sending commands to control equipment, etc.