Technical Effects in different jurisdictions

Applicants/clients in non-US countries (for example, Japan and Korea) often instructs patent practitioners in the United States (“US patent practitioners”), which typically include arguments to overcome rejections under 35 U.S.C. § 103 (non-obvious subject matter). In some cases, those arguments include ‘technical effects’ of inventions in their patent applications, which may be allegedly not achievable by relevant prior art. Examples of the technical effects include improved data accuracy, reduced power consumption, faster processing time, and performing seamless audio processing.

In such cases, the US patent practitioners need to find ways to present the arguments about the technical effects to the USPTO during prosecutions of the Applicant’s patent applications.

            * Non-US Jurisdictions

In applications originally drafted in non-US countries, some paragraphs are particularly assigned to include the technical effects of the disclosure. For example, US 2022/0263883 includes a particular section labeled as “Technical Effects”, which describes advantageous effects of the disclosure, such as “dynamically and adaptively changing a coded parameter”. A priority application of this US patent application publication is a Korean patent application.

In Korea, the technical effects is an important concept for non-obviousness consideration. The KIPO explains that, under Korean Patent Law (article 29, provision 2), an invention is held to be obvious in Korea if technical effects of the invention are not better or more improved than those of the prior art.[1]

In Japan, the advantageous effects, which should be analogous to the technical effects, is also an important concept for non-obviousness consideration. JPO states, “Advantageous effects over the prior art are factors in support for the existence of an inventive step”[2].

Because the technical effects (in Korea) and the advantageous effects (in Japan) are key concepts of non-obviousness considerations in those countries, local patent practitioners are naturally trained to emphasize the technical effects of the inventions in their instructions forwarded to their counterparts in the United States.

Also, in China, “advantageous technical effect” of an invention is compared with the prior art, when the SIPO determines whether the invention represents notable progress.[3] Thus, this author believes that the technical effects is also considered for non-obviousness determination in China, too. Furthermore, according to the EPO’s examination guidelines, the technical effect is also considered for inventive step (non-obviousness) determination in the EPO.[4]

            * United States

However, in the United States, the technical effect of the invention is not generally considered for non-obviousness under 35 U.S.C. § 103. The USPTO considers objective evidence relevant to the issue of obviousness, so-called ‘secondary consideration’.[5] Four factors for the secondary consideration includes “unexpected results” that indeed sound similar to the technical effect of non-US jurisdictions.

The ‘unexpected results’ in USPTO’s MPEP 2141 relate to test data and analysis that are direct comparison between the claimed invention and the closest prior art, which is commensurate in scope with the claims.[6] Furthermore, MPEP § 2149 states, “A showing of unexpected results must be based on evidence, not argument or speculation.”

That is, if instructions from Applicants (clients) in non-US jurisdictions include arguments or specifications without objective evidence (e.g., test data), it may be difficult for U.S. patent practitioners to present the technical effects to the USPTO, in order to overcome the rejection under 35 U.S.C. § 103.

Applicants/clients may expect that claims include the technical effect in the preambles to provide a basis for overcoming the rejection under 35 U.S.C. § 103. MPEP 2111.02 (Effect of Preamble), II (preamble statements reciting purpose or intended use) states, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” That is, even if the technical effect is recited in the preamble of the claim, such preamble may not be given with patentable weight.

Also, in STX LLC. v. Brine (Fed. Cir. 2000), the Federal Circuit held that the preamble phrase “which provides improved playing and handling characteristics”, which may be a technical effect, in a claim was not a claim limitation.

In Metabolite Labs., Inc. v. Corp. of Am. Holdings (Fed. Cir. 2004), the Federal Circuit held that a ‘preamble may provide context for claim construction, particularly, where … that preamble’s statement of intended use forms the basis for distinguishing the prior art in the patent’s prosecution history. Also, in Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc. (Fed.Cir.2002), the Federal Circuit also held that, “statements of intended use or asserted benefits in the preamble may, in rare instances, limit apparatus claims, but only if the applicant clearly and unmistakably relied on those uses or benefits to distinguish prior art.” The above two cases (Metabolite Labs and Catalina Mktg. Int'l, Inc.) discuss rare cases where the preambles can carry patentable weights. However, even in those rare cases, the preambles recite the field of use that is different from the technical effect.

In conclusion, US patent practitioners need to understand that Applicants/clients in non-US jurisdictions are familiar with the technical effects of their inventions based on their local patent rules and laws, thus their instructions can include the technical effects. If their instructions do not include specific, objective evidence, which is different from arguments or speculations, US patent practitioners may explain to them that their instructions may not be easily presented to the USPTO. Also, if Applicants/clients provide particular reasons about the technical effects with sufficient test data, US patent practitioners may provide those reasons to the USPTO, to overcome the rejection under 35 U.S.C. § 103, for example, in Amendments, during interviews with Examiners, or in Rule 312 declarations.