Author: Xue WANG

Abstract

Recently, the China National Intellectual Property Administration (CNIPA) has been issuing more and more Office Actions against utility model (UM) applications citing Article 26.3 of the Patent Law (commonly known as “Insufficiency of Disclosure”). This article explores the characteristics of “obviously lack of sufficient disclosure” within the context of UM examination and proposes an approach to predict whether the specification has sufficiently described the technical solution. In this article, we have identified a few “triggering conditions” that may prompt CNIPA examiners to raise insufficient disclosure objection under Article 26.3, and offered some practical recommendations to proactively avoid the problem during the early drafting stage. 

Recently, the China National Intellectual Property Administration (CNIPA) have been issuing more and more Office Actions against Utility Model patent applications (UM). In addition to the increasing number of “obviously lack of inventive step” rejection under Article 22.3, there has been a surprising increase in objections citing Article 26.3—insufficiency of disclosure—on the grounds that the specification fails to disclose a complete technical solution. This type of objection is not easy to overcome because it usually pertains to issues inherently present in the specification instead of claims, making it difficult to be addressed by amendment alone.

The author of this article has carefully studied the logic of such objections and tried to seek for solutions that could address the problem proactively. 

1. Why is “obviously lack of sufficient disclosure” used more and more often?

The Guidelines for Patent Examination (hereinafter “the Guidelines”), Part I, Chapter 2, Section 1 require a utility model to comply with Articles 22 and 26.3 of the Patent Law. Specifically, Section 7 of the same chapter states that “in the preliminary examination, whether the specification obviously fails to comply with Article 26.3... shall be examined”. Similarly, Section 11 also provides that “in the preliminary examination, whether the Utility Model patent application is obviously lack of novelty or an inventive step shall be examined”.

The term “obviously fail to” and “obviously lack of” can be collectively called “obvious substantive defect” and plays a critical role in the Utility Model patent prosecution. The same term does not exist in the examination of invention patent application. In the context of patent law and prosecution, the term seems to emphasize the objectivity and identifiability of the issue.

■ Objectivity means that “obvious substantive defect” must be grounded in objective facts, common knowledge, or generally accepted standards, rather than a subjective impression. Accordingly, judgments of “obvious substantive defect” should ideally rest on a consensus among patent examiners, practitioners, applicants, inventors, and relevant public.

■ Identifiability means that the problem, defect, fact, or discrepancy in question can be recognized without in-depth search, investigation, complex reasoning, or highly specialized knowledge. An examiner should be able to reach a conclusion without spending substantial effort to uncover or demonstrate the issue.

Given the emphasis on “obvious substantive defects”, examiners for UM application may naturally tend to focus on facts that are readily identifiable and defects that are easily discoverable. Correspondingly, they may be less inclined to look for matters that require in-depth investigation, complex reasoning, or specialized expertise.

Presumably, if examiners intend to issue “obvious substantive defect”, they would likely rely heavily on an inclination shaped by what is immediately apparent, without in-depth search and investigation into the fact. 

With such in mind, examiners would presumably enjoy greater freedom of evaluation when they raise obviously lack of insufficiency of disclosure (Article 26.3) versus obviously lack of inventive step. This is because a finding of insufficient disclosure does not require citation of prior art as objective evidence. Examiners can rely largely on their own technical background and industry knowledge without bearing huge burden of proof. From the examination efficiency standpoint, Article 26.3 appears to be a particularly effective tool for allocating examination resources.

Furthermore, Article 26.3 of the Patent Law provides that “the description shall set forth the invention in a manner sufficiently clear and complete so that a person skilled in the art can carry it out”. The determination of whether a person skilled in the art can carry out the invention is, in essence, a practice in which the examiner projects himself/herself into a position of a hypothetical person, drawing on his/her own technical knowledge. As a result, UM examiners can easily play a role of a person skilled in the art to judge whether the disclosure is described sufficiently clear and complete and enables the claimed solution to be carried out. 

2. Triggering conditions for “obviously” lack of sufficient disclosure

While an examiner's formation of an inner conviction of insufficient disclosure involves a degree of subjectivity, some characteristics in the specification can serve as “triggering conditions” that prompt an examiner to form such a conviction, especially in view of the high-pressure workloads faced by CNIPA examiners in recent years. These characteristics are primarily in the Detailed Description section if they exhibit the characteristics of “obviously lack of”, as detailed below.  

2.1 Formal Triggering Features

In our view, the lack of richness of the detailed description section can, from a formal perspective, serve as a trigger for an examiner's inner conviction of insufficient disclosure. For example:

(1) Limited Number of Embodiments: A specification containing only a single embodiment is more likely to trigger a rejection than the one containing multiple embodiments. 

(2) Level of Detailed Technical Description: For a given embodiment, a description with fewer technical details is associated with a much higher risk than the one with more extensive details.

(3) Limited Number of Drawings: Given that Utility Models are directed to improvements in the shape or structure of products, drawings are associated with a natural advantage in describing technical features and their role should not be underestimated in enabling a person skilled in the art to carry out the invention. Accordingly, a specification with fewer drawings is more likely to trigger a rejection than the one with a greater number of drawings.

(4) Limited Number of Reference Signs in Drawings: Similarly, drawings with fewer labeled technical features are more likely to be flagged than those with more comprehensive labeling. 

(5) Limited Experimental Data: Although a technical solution of UM is directed to structural improvements, experimental data and results demonstrating the technical effects of the solution can play a positive role in showing that a person skilled in the art can carry out the invention. Therefore, the absence of any experimental content or results is more likely to trigger a rejection than their inclusion.

2.2 Substantive Triggering Features

According to Section 7.23 of Part I, Chapter 2 of the Guidelines for Patent Examination 2023, “a person skilled in the art being able to carry out the invention means that, based on the content recorded in the specification, the person skilled in the art can implement the technical solution of the Utility Model, solve the technical problem, and achieve the expected technical effects”.

In forming an inner conviction of insufficient disclosure, an examiner's reasoning will tend to start from the technical problem to be solved by the Utility Model, as stated in the specification. The examiner then follows a “technical problem – technical solution – technical effect” framework to see if each step can be met.

Within this framework, a broader or larger technical problem implies a correspondingly richer technical solution, and a greater number of technical problems implies a proportionally greater number of technical solutions. Consequently, if the specification describes the Utility Model as solving multiple or overly ambitious technical problems, the examiner is more likely to use this as a starting point for reasoning toward an inner conviction of insufficient disclosure.

Of course, at the time of drafting the application, the inventor may naturally prefer to characterize his/her technical solution as capable of solving multiple technical problems, or capable of addressing significant or ambitious problems. In such cases, if the patent attorney cannot persuade the inventor to refine the technical problem statement to be more targeted or specific, a practical solution is to include the more refined technical problem as additional statement following the broader problem. This at least preserves the right to re-limit the technical problem during patent prosecution, should an Office Action be received.

3. Conclusion

In summary, this article has analyzed the characteristics of “obviously lack of sufficient disclosure” (Article 26.3) in the examination of Utility Model applications and explained why “obviously lack of sufficient disclosure” becomes more common in recent office actions issued by the CNIPA. Based on our analysis, we have identified various triggering conditions for an examiner to rely on obviously lack of sufficient disclosure to reject the application, and offered practical recommendations to proactively avoid such during the drafting stage.