Asia Patent Alliance

Parameter inventions - requirements in China and Korea

In China and Korea parameter inventions are handled similarly as in Japan.
In the following an example from the JPO examination standard will be reviewed from a Chinese and Korean point of view.

 


[Claim1]
A stretched packaging film made of resin that contains biodegradable polymer, which satisfies Formula (1) Formula (1): 1.61na–1.78?NS?1.61na–2.43, wherein NS refers to the plane orientation coefficient and na refers to the average refraction index.

[Claim2]
A stretched packaging film described in Claim 1, consisting of 20 to 40 weight percent of polylactic resin and 60 to 80 weight percent of resin X, which is stretched to 2.5 to 3.5 times its length and 1.5 to 2.5 times its width.

Outline of the reasons for refusal

The detailed explanation of the invention states that if a stretched packaging film which is made of resin satisfies Formula (1) it is highly stretchable and easy to open. However, there is no ground for proving that any film, including a film of which the resin composition and stretch ratio are significantly different from those mentioned above, can solve the problem if only it satisfies Formula (1). Thus, the invention of Claim 1 exceeds the scope stated in the detailed explanation of the invention. Furthermore, in the detailed explanation of the invention, in light of the common general knowledge as of the filing, the relationship between the problem to be solved by the invention and the formula of claim 1 is not explained in a way that it can be understood substantially, so the technical significance of the invention of Claim 1 is unclear.



In China the above example is judged similar as in Japan. Since the examples in the description do not sufficiently show that a film that meets the formula (1) in claim 1 can solve the problem, and the relation between the formula (1) and the technical problem to be solved by the invention is not described in the description, claim 1 may also me be considered as not supported in the description. In this case, the technical solution of claim 1 and the relation between formula (1) and the technical effect of the invention should be described in detail. Furthermore, more experiment data supporting this conclusion should be listed.
However, if the scope of the formula (1) of claim 1 includes films that do not solve the problem of the invention, claim 1 has to be deleted to overcome these issues and by deletion of claim 1 claim 2 will be patented.

The definition and methods for judgement of novelty of parameter inventions in the Korean examination principle are similar to Japan. Therefore it can be assumed that the above example can be applied in Korea as well. Also regarding the novelty of parameter inventions in Korea, the following precedent was made “If the parameter of an invention are new, but the only new aspect is the observation/measure method of well-known physical attributes and the results of the observation/measure method are not new, even if the physical attributes are expressed as parameters, this is just a different expression of well-known properties/characteristics and confirmation of an effect that has been dwelling in well-known knowledge and therefore novelty of the technical configuration expressed in the parameters cannot be approved. ” (Seoul Central District Court)