Apr 30th, 2008 | IP-sharing, Resources | No Comments
专利说明书的“发明内容”应该怎么写？
声明：本文为choicky原创，同时发布在个人博客以及ipsky.org上；转载时请保留此声明。
专利申请文件主要包括权利要求书、说明书等，其中，权利要求书用于“表述请求保护的范围”，而说明书用于支持、解释权利要求。
说明书包括发明名称、技术领域、背景技术、发明内容、（附图说明）和具体实施方式这几个部分。根据专利法《实施细则》，“发明内容”应当写明（1）发明或者实用新型所要解决的技术问题以及（2）解决其技术问题采用的技术方案，并（3）对照现有技术写明发明或者实用新型的有益效果。也就是说，“发明内容”部分应当至少包含这3项内容。
对于第（1）部分，我通常是这样写的：
针对上述现有技术的缺陷A，本发明（实用新型）提供一种产品（方法），该产品（方法）能够……（即克服缺陷A）。
但是，有一次组长大人向我提到，我的这种写法出现了“否定用语或者负面用语”，与新版审查指南的要求不太符合。
印象中，也是记得有这么一个规定。于是我查了一下，发现新版审查指南（2006年版）第126页的确有“用正面的、尽可能简洁的语言客观而有根据地反映发明或者实用新型要解决的技术问题，也可以进一步说明其技术效果。”这些文字。但是，如何“用正面的”的语言反映要解决的技术问题呢？审查指南上并没有提供范例。
我查阅了一下吴观乐的得意之作《专利代理实务》，得到的范例都是这种类型的：
本发明要解决的技术问题是提供一种能够……的产品（或者方法）。
为解决上述技术问题，本发明提供的产品（或者方法）包括……
武术界久仰北乔峰南慕容，而知识产权界敬仰北郑（郑成思）南吴（吴汉东），而知识产权之下与专利有关的实务，当数吴观乐老先生是权威。因此，可以说，作为吴观乐的得意之作的《专利代理实务》，是比较值得参考的。
但是，我觉得，吾老先生所采用的范例，关于“发明内容”的这么一个地方，都是有不足之处的，我觉得其中一个不足之处是不符合中文的行文习惯，导致有歧义。例如，将范例的句子浓缩一下，得到句子主干：要解决的技术问题是提供一种（能克服现有缺陷A的）产品（或者方法）。从字面理解，就相当于“本发明”是为了“不”提供一种（能克服现有缺陷A的）产品（或者方法）。
就此，我与组长大人沟通了一下。最后，组长大人将我的文稿修改成：
本发明的发明目的在于提供一种能够……的产品（或者方法）。
为实现上述发明目的，本发明提供的产品（或者方法）包括……
对于这种描述，我觉得，严格来说，也不仅符合“用正面的”的语言反映要解决的技术问题这些要求的。
再求诸《审查指南》，视野放大点，可以看到，第126页，完整的内容是这样的：
发明或者实用新型所要解决的技术问题应当按照下列要求撰写：
(i) 针对现有技术中存在的缺陷或不足；
(ii)用正面的、尽可能简洁的语言客观而有根据地反映发明或者实用新型要解决的技术问题，也可以进一步说明其技术效果。
因此，个人认为，我采用的写法还是比较合适的，即：
针对上述现有产品（或者方法）所存在的缺陷A，——这是现有技术存在的缺陷或者不足；
提供一种能够……（克服缺陷A）的产品（或者方法）。——这体现了发明目的（以及说明书技术效果）
当然，严格来说，我的这种写法也没有完全符合《审查指南》的要求。
但是，所谓尽信书不如无书，《审查指南》仅仅一个部门规章，也许会有不足之处呢？这不，最近出现了法院否定审查指南规定的判例。
再叽歪一下，个人觉得，审查指南中应该这样子规定：
发明或者实用新型所要解决的技术问题应当按照下列要求撰写：
(i) 针对现有技术中存在的缺陷或不足；
(ii)用正面的、尽可能简洁的语言客观而有根据地反映发明或者实用新型的发明目的，也可以进一步说明发明或者实用新型的技术效果。
最后，解释一下为什么要文绉绉地纠缠专利说明书的这么一个小细节。是这样子的，根据专利法《实施细则》第六十四条第二款，《专利法》第二十六条第三款可用来将一件专利无效掉（通俗的理解是“将专利否定掉”）。而专利法第二十六条第三款就是所说的“能够实现”，而参考审查指南第122页，得知其中一种被认为是“不能够实现”的情况是：” (3) 说明书中给出了技术手段，但所属技术领域的技术人员采用该手段并不能解决发明或者实用新型所要解决的技术问题；“
也就是说，即使技术方案很强悍，但是“技术问题”没写好，专利就有被无效的风险。
Apr 29th, 2008 | IP-news, IP-sharing | No Comments
Intellectual Property Center, Chinese Academy of Social Sciences
1. Traditional Attitudes toward the Results of Intellectual Creations
Although ancient Chinese made many famous inventions, such as papermaking, printing, gunpowder, and compass, there was no intellectual property system in ancient China. The traditional attitudes toward the results of intellectual creations were reflected well by the two following sayings.
The first saying is “to steal a book is not a steal” or “to steal a book is an elegant offence”. This referred to literary works, means that if one stole a book to read, it was not a steal. If we infer a little bit further, not only to steal a book (tangible property) to read was not a steal, but also to steal a work (intangible property) to pirate was not a steal.
The second saying is “to pass an invention or know-how to one’s daughter-in-law but daughter”. In a given society, if there is a patent system, an inventor can apply for a patent and enjoy an exclusive right in a certain period. If there is no patent system, however, the inventor must take some confidential measures to keep the invention as secret. Otherwise, once the invention disclosed, other people would be freely to take use of the invention and the inventor’s interests would be damaged. Because there was no patent system in ancient China, if one passed an invention or know-how to one’s daughter-in-law, the invention or know-how would be kept as secret in one’s family. If one passed an invention or know-how to one’s daughter, the invention or know-how would be disclosed to another family after the daughter married to a man in another family. Therefore, this saying means that there was no respect to other’s invention.
The traditional attitudes toward the results of intellectual creation were based on the traditional economic structure and the related social structure. It must be noticed that these three elements, the traditional attitudes and the related economic and social structures, are the starting points for China to import the intellectual property system that originated from western world. And even in today, if one is going to consider the intellectual property system or the protection of intellectual property rights in China, one must bear in mind the traditional attitudes and the related social and economic structures. In fact, the traditional attitudes toward the results of intellectual creations still have some kind of influence today.
2. The intellectual property system before 1980’s
At the end of Qing Dynasty, China enacted some regulations and laws concerning the protection of intellectual property rights, such as the Regulations on the Reward of Technical Inventions, Copyright Law, and Provisional Regulations on the Registration of Trademark. Those regulations and laws were enacted against the background that China was trying to establish a modern legal system, and most laws in that time were imported from Japan. Because of the quick collapse of the Qing Dynasty and the social and economic situations in that time, however, the regulations and laws were never implemented.
During the period of Republic of China (1911-19４9), both Beijing Government and Nanking Government enacted some laws concerning copyright, trademark, and patent. For example, Nanking Government enacted Copyright Law in 1928, Trademark Law in 1930, and Patent Law in 1944. After the enactments of the laws above, it seemed that China had established its intellectual property system. However, those laws were almost in papers. Because of the social and economic situations in that period, especially the political turbulence and the wars in that period, the copyright law and the trademark law only played a very limited role in some municipal areas, and the patent law was not implemented at all.
After the establishment of People’s Republic of China in 1949, China promulgated several regulations concerning intellectual property rights, such as Provisional Regulation on the Protection of the Rights of Invention and Patent (1950), Resolution on the Improvement and Development of Publishing Works (1950), Provisional Regulations on the Registration of Trademark (1950), and Regulations on the Reward of Invention (1963), and Regulations on the Administration of Trademark (1963).
Under the special political, economic, and social situations after 1949, the regulations above did not reach the goal to promote technology inventions and prosperity of literary and artistic works. In fact, an intellectual property system was not necessary at all for the so called “planning economy”. Under this economic system, any technical invention belonged to the state, and the inventors were encouraged by some limited awards from the state. Under this economic system, the trademark registration was a method to manage the planned economy. In the period of “Culture Revolution”, even those limited laws and regulations were nothing left.
3. The Establishment of the Modern Intellectual Property System
China began to carry out its policy of reform and opening to the outside world in 1978. In order to meet the needs of the reform and opening to the outside world, China started to establish its modern intellectual property system.
In August 1982, China passed its trademark law, which went into effect in March 1983. In March 1984, the patent law was passed and went into effect in April 1985. In September 1990, China passed its copyright law, which went into effect in June 1991. And again in September 1993 the unfair competition law was passed and went into effect in December 1993. In addition to the laws above, China adhered to Paris Convention for the Protection of Industrial Property in 1985, Berne Convention for the Protection of Literary and Artistic Works in 1992, Geneva Convention for the Protection of the Producers of Phonograms against Unauthorized Duplication of their Phonograms in 1993, and again TRIPS Agreement in 2001.
In a period of less than 20 years, China enacted the laws concerning with trademark, patent, copyright, trade secret, and unfair competition, and adhered to the primary international conventions in intellectual property rights administered by WIPO and WTO, such as Paris Convention, Berne Convention, and TRIPS Agreement. It is a unique achievement in the world that China has established a modern intellectual property system in such a short period of time.
In fact, China has tremendously enhanced its level of intellectual property protection in recent ten years. This is demonstrated by the two rounds of the legislatures after 1992. While the first round of the legislatures took place under the background that China and the United States disputed on the protection of intellectual property, the second round of the legislatures took place under the background that China made its efforts to become a member of WTO.
In January 1992, China and the Untied States signed their first Memorandum on the protection of intellectual property rights. In this memorandum, China promised to amend its patent law, to provide protection to trade secret, and to adhere to Bern Convention and Geneva Convention. In light of the memorandum, China amended its patent law in 1992, expanded the protection to chemical products, prolonged the patent term to 20 years, and provided the patentee a new right to control the import of the patented invention. In 1993, China enacted its Unfair Competition Law, which provides the protection of trade secret and prohibits some other unfair competition practices. Although China did not amend its copyright law this time, it adhered to Berne Convention in 1992 and Geneva Convention in 1993, and thereof greatly enhanced the level of copyright protection.
Since 1986 China had made its efforts to become a member of GATT. After the conclusion of Uruguay round negotiation of GATT and the establishment of Word Trade Organization in 1995, China made its efforts in turn to become a member of WTO. In order to adhere to WTO, China must amend its related laws in accordance with the agreements of WTO. Under this background, the intellectual property laws, such as patent law, copyright law, and trademark law, must be amended in light of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS agreement).
In August 2000, China amended its patent law. In October 2001, China amended its copyright law and trademark law. In addition to these amendments, China promulgated the Regulation on the Protection of New Plant Varieties in March 1997, and the Regulation on the Protection of the Layout of Integrated Circuits in 2001. With these legislatures and the legislatures before, China fulfilled its obligation under TRIPS Agreement and established a new and advanced intellectual property system, which followed the principles, standards, and basic requirements set by TRIPS Agreement, Paris Convention, and Berne Convention.
4. The gap between the legal system and the social reality
Now two issues have been touched in this paper. On the one hand, the traditional attitudes toward the results of intellectual creations are discussed, such as “to steal a book is not a steal”, “to pass an invention or know-how to one’s daughter-in-law but daughter”. On the other hand, China imported intellectual property system in 20th century and established a new and advance intellectual property system at the beginning of this century that followed the international principles, standards, and basic requirements. So what is the relationship between these two issues? Is the new and advanced system implemented well in China?
It is apparent that the intellectual property system is neither rooted in the traditional economic and social structures, nor rooted in the traditional ideology. In some extent, this system is alien to the traditional ideology and the related economic and social structures. Therefore, how this system is going to operate and what a role this system is going to play, are totally dependent on the current social and economic situations in China, and dependent on the current ideology of intellectual property rights in China.
Since 1980, because of the carrying out of the policy of reform and opening to the outside world, the social and economic situations in China have changed fundamentally. Many new social and economic entities have emerged, personnel and financial management have been changed greatly, many municipal cities have been highly industrialized, and a lot of new industrialized cities have been established. Under this background, traditional agricultural economy has been disappearing, the traditional social structure has changed tremendously, the awareness of personal rights is greatly enhanced, and the attitudes toward the results of intellectual creations are greatly changed. It seems that the imported intellectual property system has taken a root in the new social and economic situations, and the new ideology of intellectual property rights has taken its shape.
In addition to the social and economic changes, the political system has changed as well and contributed a great deal to the implementation of the intellectual property system. In the executive level, China has established Trademark Office, Copyright Office, Patent Office, and State Intellectual Property Office. These offices are in charge of different administrative affairs concerning trademark, copyright, patent, and have played an important role to promote the protection of intellectual property in China. In the judicial level, China established special trial courts of intellectual property in Supreme Court, provincial High Courts, some Intermediate Courts, and the courts in big municipal cities. Most of the judges in those special trail courts are experts in intellectual property law, having studied intellectual property law in western countries, such as the United States, United Kingdom, Australia, Germany, and Japan. Up to now, they have decided many cases and protected the interests of many owners of copyright, patent, trade secret, and trademark.
Thanks to the efforts made by the legislative, executive, and judicial systems, China has established a good framework to protect the intellectual property rights, and created a good environment for the foreign investment. And this framework has encouraged technology inventions, promoted cultural prosperity, and regulated market economy. According to State Intellectual Property Office, the patent applications accumulated to 1 million in 2000, and reached 2 million in 2004. According to the Trademark Office, trademark applications in resent years are about 200 thousand every year, reflecting the prosperity and development of industry and commerce. It is apparent that the intellectual property system in China has played an important role, and has been implemented to a certain degree.
On the other hand, however, there are still many problems in the protection of intellectual property in China. For example, piracy, patent infringement, passing off, and unfair competition do exist and disturb the economic and social orders. Sometimes the infringement activities are so serious and the government agencies have to take actions to curb the serious piracy and passing off. It seems that some people have no awareness to respect other’s intellectual property rights. It is under this kind of situations that many foreign and domestic enterprises are complaining that their intellectual property rights are not protected well.
Actually, only after the enactment of the trademark law, patent law, copyright law, and unfair competition law, the enforcement became a big problem in China. In this respect, China and the United States disputed again in 1995 and 1996, and signed their second and third memorandums on the protection of intellectual property rights, especially on the enforcement of the laws. After China amended its intellectual property law in accordance with TRIPS agreement and became a member of WTO, both foreign and domestic right owners are still concerned to the enforcement. If the new and advanced intellectual property system and the related rights can not be enforced, the system and the rights would be meaningless.
Therefore, while China has established an advanced intellectual property system, there still exits a big gap between the legal system and the social and economic reality. This is well demonstrated by the problems such as the enforcement of the intellectual property laws, and the weak awareness of intellectual property rights. If China is going to implement the legal system well, there are still a lot of works to be done.
5. Conclusion
To establish and enforce an intellectual property system in a given society, the key elements are the economic and social structures, and the related ideology of intellectual property rights. Although China tried to establish its intellectual property at the end of Qing Dynasty, in the period of Republic of China, and in the period between 1950 and 1980, the intellectual property laws and regulations in those three periods were almost in papers and not implemented. The reason is that before 1980’s, the basic economic structure and social structure in China, and the related attitudes toward the results of intellectual creations, only changed a little bit, or even did not change at all. Thus, the imported intellectual property system did not take a root in the society, or only played a limited role in some limited areas.
Since 1980, in order to meet the needs of reform and opening to the outside world, China has made great efforts again to establish its intellectual property system. In the meanwhile, the basic social and economic structures in China have changed fundamentally, new social and economic entities emerged, new political and legal systems were erected, and right awareness strengthened. It is under this background that the imported intellectual property system has been rooted in the social and economic life, and the traditional attitudes toward the results of intellectual creations have changed fundamentally.
Although there is still a big gap between the imported intellectual property system and the social and economic reality, although there are many problems in the protection of intellectual property rights here and there, the basic framework for the protection of intellectual property rights has been erected, and the basic social and economic picture has changed. Under these situations, more and more people are honoring other’s intellectual property rights, more and more right owners are vigorously enforcing their rights. Therefore, the problems related can be resolved in this framework, and the gap between the intellectual property system and the economic and social realty will be reduced gradually and eliminated finally.
Now China is developing and improving its new social and economic systems. It is no doubt that these new social and economic systems are contributing to the implement of the new and advanced intellectual property system, and in turn the intellectual property system is contributing to the development of the new social and economic systems in China. Thus the imported intellectual property system shall be rooted more and more hardly in China and play a more and more important role in the society.（Li,mingde）
From: http://int.ipr.gov.cn/ipr/inter/info/Article.jsp?a_no=185348&col_no=1108&dir=200803
