Identification of common general knowledge in substantive examination of Chinese patent application

During the substantive examination of Chinese patent application, examiners often raise negative opinions on common general knowledge, and most of the Notifications of Office Action do not provide the proof of common general knowledge. In fact, from the perspective of examination practice, the search for the proof of common general knowledge is often more complicated and time-consuming than the collection of reference documents of prior art. Therefore, when the examiner raises negative opinions on common general knowledge that is not supported by evidence, the applicant should be conscious that in many cases, it is a tentative opinion, which means the examiner is uncertain about whether the technical feature belongs to common general knowledge or not.

From the logic of responding to office action, the first conclusion can be drawn is that there must be distinguishing technical features implying the novelty of the technical solution. Secondly, if the examiner can not make an exact judgment of inventive step from the technical feature, it means that the examiner can not find the unexpected technical benefits of the technical feature by examining the description.

Usually, the applicant might feel unable to respond and refute the examiner’s negative opinions on common general knowledge, since the one who gives the opinion on common general knowledge should bear the burden of proof. In this case, the examiner needs to prove his/her opinion, and it is impossible for the applicant to submit evidence that does not exist, so what the applicant needs to do is to deny the opinions of the examiner.

But, one thing that needs to be aware of is that the examiner is in the dominating position in the examination and making decisions. Hence a simple negation from the applicant can not prove the inventive step to the examiner. The key point for responding to the examiner’s opinions should be to emphasize the technical benefits and the non-obviousness of the distinguishing technical features.

According to the regulation on common general knowledge of invalidation procedure in Section 4.3.3, Chapter Ⅷ of Part Ⅳ of the Guidelines for Patent Examination,

“The party concerned alleging that certain technical means is common knowledge in the art shall bear the burden of proof for its allegation”, “The party concerned may prove that certain technical means is common knowledge in the art with reference to the technical contents recorded in reference books such as textbooks, technical dictionaries, or technical manuals”.

In other words, according to the regulation of the type of evidence, reference books such as textbooks, technical dictionaries, and technical manuals are the main source of evidence. In judicial practice, common general knowledge is also a kind of the fact that the parties concerned do not need to prove. According to the judicial interpretation of the Supreme People’s Court on the application of the Civil Procedure Law, the parties concerned do not need to prove the following facts:

1. Natural laws, theorems, and laws；
2. A well-known fact；
3. A fact presumed according to legal provisions；
4. Another fact presumed based on known facts and daily life experience rules；
5. A fact confirmed by a legally effective judgment of the People’s Court；
6. Facts that have been confirmed by the effective arbitrament of the arbitration institution；
7. Facts that have been proved by valid notarized documents.

Therefore, not all common general knowledge needs the proof to be established. During substantive examination, reexamination, invalidation and even litigation procedure, there are common general knowledge or common methods that do not require the proof.

In litigation practice, common general knowledge is always the controversial part during the patent confirmation and protection. According to the latest judicial interpretation of the Supreme People’s Court, common general knowledge has an indefinite period of evidence production, that is to say, if the opinion of common general knowledge is advocated, the evidence of common general knowledge can be submitted at any stage during the procedure of reexamination, invalidation and even the first/second instance of administrative litigation, without delegalizing the evidence due to the time limit of the procedure. This indicates that the judicial procedure has endowed the evidence of common general knowledge with great vitality.

References：https://english.cnipa.gov.cn/col/col3068/index.html