Problems and Suggestions on the Writing of the Effects of Patent Technology

CHANG TSI
Insights

February19
2025

When writing a new patent application in China, the expression of the main line of technical scheme is very important. It refers to the core logical idea of the scheme composed of technical problems, technical solutions and technical effects. With in-depth understanding through the main line of technical schemes and convert it into three parts: background technology, claims and technical effects. Not only is it necessary to conduct in-depth research and understanding of the technical solution, but it is also essential to transform the understood content into accurate and logical expressions. Therefore, the expression of the main content is a crucial part that tests the fundamental writing skills, and the importance of articulating the technical effects within it is self-evident. The clarity and professionalism of the expression of the background technology and technical effects will give the client an initial impression and affect the entire review process of the case. The handling of technical effects can be addressed from the following aspects.

The first type is that the technical effect needs to correspond to the background technology. The technical effect should address the technical problem, and a detailed and complete derivation process based on the technical features of the independent claims should be provided.

The second category concerns the issue of deriving technical effects in conjunction with the points of invention. In some cases, the technical features of the independent claims are highly generalized using a few simple sentences, effectively providing a brief higher-level summary of the claims. Based on this higher-level summary, the technical effects are then derived. However, the actual content of the claims is more specific and includes a richer set of technical features compared to the generalized solution. This generalization effectively elevates the independent claims, significantly reducing the necessary technical features required for deriving the technical effects. On one hand, this approach may affect the determination of the essential technical features of the independent claims. When comparing these essential technical features with other solutions, other features might be considered as obvious means under this generalized approach. In reality, the inventive concept lies not only in the higher-level design but also in the innovative implementation details of the solution. On the other hand, if the essential technical features are only encapsulated in the generalized solution, then the drafting of the independent claims should consider whether it is necessary to remove non-essential technical features and elevate the technical solution accordingly.

The third category concerns the issue of deriving the technical effects of an independent claim by introducing technical features that do not originate from the independent claim. In the derivation process, content not recorded in the independent claim is added, which can lead to serious consequences. During substantive examination, it may be directly concluded that the technical effect can only be achieved through the combination of all features, implying that the content not recorded in the independent claim is a necessary technical feature that must be added to the claim. This greatly narrows the scope of protection of the independent claim, resulting in a loss of rights for the client. Additionally, such examination opinions can cause the client to question the professional competence of the agent. Therefore, when deriving the technical effect, it is crucial not to include non-claimed features and to ensure logical rigor.

The fourth category concerns the issue of lacking a derivation process for the technical effects. In some writings, the technical effect is directly derived from the technical characteristics without elaborating on how the logic is established. This results in a disconnection between the technical characteristics and the technical effect. It is necessary to add a detailed and complete derivation process to clearly and explicitly explain the reason why the technical solution achieves the corresponding technical effect.

The fifth category concerns the issue of lacking technical effects with technical character. According to the revised examination guidelines, "If, from the user's perspective, the invention objectively enhances user experience—meaning that the enhancement in user experience is objective and not a subjective preference varying from person to person—it can also be explained in the specification. Additionally, it should be clarified how this enhancement in user experience is brought about or generated by the technical features constituting the invention, as well as the algorithmic features or business rules and methods that functionally support and interact with these technical features." In other words, while the expression of technical effects can include content related to user experience, this should serve as an embellishment to emphasize importance. It does not imply that technical effects can be described solely from the perspective of user experience. Ultimately, an invention patent application protects technical solutions, and it is necessary to first discuss the technical effects from a technical standpoint.

The sixth category concerns the issue of expressing technical effects solely as the transition from manual to automatic. The technical effects expressed in some cases can be realized by general manual to automatic schemes. Moreover, if there is only a transition from manual to automatic, it is easy to understand that the process of manual operation and the process of automatic implementation are logically the same, that is, there is no improvement in the design concept of the scheme. Only an automatic transformation is made based on the original manual processing logic. In summary, this simplistic expression of the effect greatly reduces the innovation of this application. Therefore, when writing, it is necessary to describe the differences in the specific solution logic of this application's technical solution compared to related technical solutions. As for the realization of automation, if there is a need to emphasize it, it can be placed in a later position, it can be placed in the back position.

The seventh category concerns the complete expression of technical effects. In some cases, the technical effects are limited only to those derived from the independent claims, and the expressions of technical effects throughout the document do not cover the multiple inventive points provided by the inventor in the disclosure. It is important to note that some of the technical effects explicitly listed by the inventor in the relevant sections of the disclosure include subsequent applications of the solution, integration with actual business, and solutions to market demands. Compared to the technical effects brought by the technical solution itself, these aspects represent the value generated by the practical application of the solution, which is of great significance. For this part of the content, a recommended approach is to translate these aspects into technical solution expressions and, as much as possible, deploy them in dependent claims or, from the application perspective, deploy them in separate independent claims. This ensures that the client's innovation receives multi-angle and multi-level protection. On the other hand, when expressing the technical effects, the application value, business value, and market value of the solution can be articulated based on the inventor's ideas, thereby elevating the innovative height of the solution. Therefore, it is recommended to pay attention to the inventor's expression of the technical effects or application needs of the solution and focus on the emphasized content.

The final problem is the improper representation of technical effects. The expression of technical effect also needs to pay attention to a class of problems is to avoid inappropriate expressions, such as raising the price of the object and interrupting the operation of the user through information interference, which is a kind of expression that may harm the interests of the user, and there will be suspicion of harming the public interest. For example, it can be converted to provide objects that meet user needs, provide users with more optimized choices, reduce the time spent by users to re-search, and reduce the corresponding waste of computing resources. In the design involving user guidance, it is necessary to consider whether the public interest is affected, and if the negative expression is avoided as far as possible, the impact on patent licensing may be brought about.

Based on the problems above, here are some practical handling suggestions:

  1. At least part of the technical effect must correspond to the technical problem, must be able to solve at least one of the technical problems mentioned in the background technology.
  2. Combined with the technical effects of exclusive scheme derivation, if some features are not necessary in the derivation of effects or are not necessary for the integrity of the scheme theme, it should consider whether they are non-essential technical features and delete them.
  3. The technical effect of the derivation of exclusive rights cannot be derived in combination with the features of non-exclusive rights, so as to avoid the problem of the lack of necessary technical features of exclusive rights in the actual examination stage. If the derivation logic must include the features of non-exclusive rights, it is necessary to consider adding the features to exclusive rights.
  4. The derivation of the effect of exclusive rights requires a detailed and complete discussion process, and the causal relationship is tightly knit and clear.
  5. To avoid the technical effect of only realizing automation and improving the user experience, it is necessary to discuss the technical effect of the technical solution at the technical level before this.
  6. Avoid statements that may affect the interests of the applicant, such as the technical effect may have a negative impact on the public interest, which will affect the applicant to obtain the patent.
Jessie Wu
Counsel | Patent Attorney
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