Report Q180

Content and relevance of industrial applicability and/or utility as requirements for patentability

in the name of AIPPI Chinese Group

By Deng Jianliang

The question that whether there should be additional requirements such as industrial applicability or utility and what their contents should be has never been studied in depth. Not only TRIPS and the ongoing discussion at WIPO in the SPLT negotiations but also the differences in granting patents in different countries make it important to conduct studies on the issue of industrial applicability and utility as requirements for patentability. Art 27 TRIPS provides that, subject to certain exceptions, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. The term “capable of industrial application” may be deemed by members of TRIPS to be synonymous with the term “useful”. However, the contents of these terms are left to the members and their legislation or case law.

The additional requirement of industrial applicability and utility differs considerably in the granting practice of the major patent offices including EPO, JPO and USPTO. In Europe, the term “invention” is interpreted in the sense of implied technicality. The Japanese Patent Act contains a similar provision which puts that any person who has made an industrially applicable invention may obtain a patent therefore. The word “industry” is interpreted in a broad sense, according to the examination guidelines of JPO including mining, agriculture, fishery, transportation, telecommunication etc. Differently, in the US, industrial applicability is not necessarily required for patentability, the term “useful” plays a key role. In other words, inventions are not limited to industrial applicability, as long as they have utility they are patentable in the US.

In China, the term “practical applicability” is applied in the patent law which is equivalent to “industrial applicability” / “utility” adopted by other countries. However, the requirements of practical applicability set forth by the Chinese Patent Law and the related provisions are more similar to the definition of “industrial applicability” adopted by the European Patent Office. Under the current patent practice of China, besides novelty and inventiveness, practical applicability is one of essential requirements for granting a patent application.

1. the current situation in China

Art.22.1 of the Chinese Patent Law provides that any invention or utility for which a patent right may be granted must possess novelty, inventiveness and practical applicability. Therefore, practical applicability is one of necessary requirements to grant the patent right to an invention or utility model in China. Art. 22.4 of the Chinese patent law further describes that practical applicability means that invention or utility model can be made or used and can produce effective results. Along with novelty and inventiveness, practical applicability is an additional requirement for patentability established in the statutory law in China.

2. Industrial applicability

2.1 Definition

As we mentioned above, the term “practical applicability” is adopted in the Chinese Patent Law which is similar to “industrial applicability” provided by the European Patent Office. It is described in more details in the Guidelines to Patent Examination of China (GPE). In accordance with GPE, practical applicability refers to the subject matter of an invention or utility model that shall be made or used in industries and can produce effective results. The invention or utility model to which the patent right has been granted shall be the one which can resolve the technical problem and be applied. For example, where the invention is a product, it shall be able to be made industrially, where it is a process, it shall be able to be used industrially and to resolve the technical problems. The industries mentioned above include industry, agriculture, forestry, fishery, animal husbandry, communication & transportation, recreation & sports, articles of daily use, and medical equipment, etc.

The technical solution which can be made or used in industries refers to any exploitable technical solution which conforms to the laws of the nature and possesses technical features. Those solutions do not mean they must use the machine or produce products. They may be a process or others.

Producing effective results means that the economic, technical or social result produced by an invention or utility model can be expected by a person skilled in the art on the filing date of an application. These results shall be positive and profitable.

2.2. What is the relevance of practical applicability and how does it affect granting prceedings?

Although practical applicability is a prerequisite for patentability, its relevance may be limited because very few inventions are rejected for lacking of practical applicability in China. In many cases the examiner may find a different reason for denying the application instead of lacking of practical applicability. Therefore, we are in a position that practical applicability only plays a minor role in the examination proceedings in China.

Under the patent practice in China, the examiner will evaluate whether or not an invention possesses practical applicability before the examination of novelty and inventiveness. The following principles will be applied when the examiner evaluate practical applicability of an invention: (1) the basis for examination shall be the entire disclosure disclosed in the description (including the drawings) and claims rather than the claims only; (2) the standard of whether or not it can be exploited lies in whether or not it can be carried out by a person skilled in the art; and (3) practical applicability is independent of how the invention is created and whether or not it has been exploited.

Art. 22.4 of the Chinese Patent Law set forth the elements which constitute practical applicability. As described in Art 22.4 of the Chinese patent law, there are two elements in determining practical applicability: one is that invention or utility model can be made or used; and the other one is that invention or utility model can produce effective results.

The provisions of Art. 22.4 of the Chinese Patent Law, taken as a whole, is the legal basis for determining whether or not an application possesses practical applicability. Some various situations for lacking practical applicability are described as follows:

(1) Non-Repeatability

The subject matter of an invention or utility model shall possess repeatability.

Conversely, the subject matter of an invention without repeatability does not possess practical applicability.

The repeatability means that a person skilled in the relevant art is able to repeatedly exploit the technical solution adopted in the application according to the disclosure. Such repeated exploitation shall not rely on random elements and results shall be the same. The subject matter of an application without repeatability does not possess practical applicability. However, there is a substantial difference between the low rate of acceptability and non-repeatability. The former may be repeatedly exploited and the low rate may be caused by certain technical conditions; but the latter means that even when all the necessary conditions are guaranteed, the person skilled in the art still can not repeatedly obtain the results to realize the technical solution.

(2) Contrary to the Laws of Nature.

The application for a patent contrary to the laws of nature cannot be exploited which does not possess practical applicability. The examiner will pay special attention to the subject matter of the application which violate the laws of energy conservation, such as perpetual motion machines, which certainly do not possess practical applicability.

(3) Product Made in Unmatched Natural Condition

An application for a patent or utility model possessing a practical applicability can not be a product made in an unmatched natural condition. The only unremovable product obtained from the unique natural condition does not possessing applicability. However, the component per se of the product above can not be regarded as not possessing applicability just because the said product made in the unmatched natural condition does not possess applicability.

(4) Non-treatment Purpose Surgical Operation for Human or Animal

Surgical operation includes the operations with both treatment purpose and non-treatment purpose. The surgical operation with treatment purpose is unpatentable under Art. 25 of the Chinese Patent Law. All of the non-treatment purpose surgical operations do not possess industrial applicability because a living human being or an animal is taken as the object and can not be applied in industry.

(5) No Effective Result

The technical solution of an application having practical applicability shall produce expected effective results. Those technical solution which is obviously unprofitable, far away from the needs of the society, seriously pollutes the environment, seriously waste energy or sources, impairs health of human, does not possess practical applicability.

(6) Methods of Measuring Physiological Parameters of Human Beings under the Conditions of Extreme Limits

The methods that use a person as the object for measurement under an extreme limit environment to get the physiological parameters of the human body at the extreme limit does not possess practical applicability because it constitutes a threat to human beings. Since endurance against extreme limits varies from person to person, and experienced personnel for measuring is required to determine the specific extreme limit according to the conditions of each target person, such method can not be used industrially and does not possess applicability. For example:
(1) the method of measuring by gradually decreasing the temperature of a human or an animal in order to measure the degree of cold-assistance of the human being or animal;
(2) the method of non-invasive examination to measure the supersession function of the coronary artery through increasing the workload of the coronary artery gradually by decreasing oxygen partial pressure of the inhaling air and observing the compensation reaction of the coronary artery from dynamic change of the artery blood pressure.

2.2 How is practical applicability treated in proceedings concerning the validity of patents?

Based on Rule 64 of Implementing Regulations of the patent law of China, the lack of practical applicability is a ground for invalidation of a patent. Invalidating a patent under Art. 22.4 of the Chinese Patent Law requires that the opposing party may show the claimed patent either can not be made/used or fails to produce positive effect.

3. Conclusion

Based on the discussion above, we take the position that practical applicability should be included as additional requirement for patentability in the patent law to achieve the goal of Chinese Patent Law. The Chinese government grants patents to inventors to encourage progress in applied science. The need for these incentives is almost universally recognized in the fact that patent systems now exist in most of the industrialized, and even some developing, nations of the world. From the definition of practical applicability set forth in the Chinese patent law, an invention, without practical applicability, is far from the purpose of the patent law because it fails to promote the development and innovation of science and technology if it can not be made/used in industry or can not produce effective results. Therefore, practical applicability should be included as one of the requirements for patentability under the Chinese patent law.

Furthermore, the practical applicability requirement of patentability makes possible to avoid the waste of technical resources. To meet the requirement of practical applicability, one has to spend limited resources to make practical invention to meet the needs of the society. Therefore, the patent law could approach its goal by incorporating the requirement of practical applicability.

Some countries include industrial applicability as additional requirement for patentability, and other countries exclude it from the basis to establish a patent right. We do not think it necessary to harmonize both parties because, we believe, very few applications are rejected for lacking of industrial applicability in most countries. In the modern society, most applicants are anxious to benefit from their inventions; meanwhile, to promote the innovation of science and technology, therefore, most inventions have practical applicability somehow even though this requirement is not included in the statutory law of some countries. Based on the reasons above, we are positive that it is unnecessary to harmonize both requirements towards each other.

Alternatively, for those countries which include practical applicability as additional requirement for patentability, we would suggest, if they intend to reject applications from the countries without requirement of practical applicability, that other reasons be established for denying the patent, if any, such as insufficient disclosure rather than practical applicability. We believe that it might be a better approach to settle the dispute between two parties on this issue.