4.7.6 Inventiveness
Article 22 paragraph 3 of the Patent Law provides the following: “Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents an obvious progress, and that the utility model has substantive features and represents a progress.” For the examination of inventiveness, the Guidelines for Patent Examination have detailed provisions, including those on “prominent substantive features” and “obvious progress.”
That an invention has “prominent substantive features” means that the invention is distinctly and substantially different from the prior art; the “three-step approach” is usually followed in examining this. That an invention “represents obvious progress” means that the invention can produce advantageous technical effects as compared with the prior art.
When evaluating whether or not an invention possesses inventiveness, not only is the technical solution itself considered, but also the technical field to which the invention pertains, the technical problem solved and the technical effects produced by the invention. The invention should be considered as a whole. In assessing inventiveness, it is permissible to combine together different technical solutions disclosed in one or more prior arts to assess the claimed invention. This differs from the principle of “separate comparison” in the assessment of novelty.
4.7.6.1 Assessment of prominent substantive features
To determine whether an invention has prominent substantive features is to determine whether, to a person skilled in the relevant field of technology, the claimed invention is nonobvious as compared with the prior art. If the claimed invention is obvious as compared with the prior art, then it does not have prominent substantive features; if it is nonobvious, then it has prominent substantive features.
Usually, three steps are followed in determining whether a claimed invention is obvious as compared with the prior art. The first step is determining the closest prior art. The closest prior art refers to a technical solution in the prior art that is the most closely related to the claimed invention. This becomes the basis for determining whether or not the claimed invention has prominent substantive features. It should be noted that, when determining the closest prior art, prior art in the same or similar technical fields is considered first. The second step is determining the distinguishing features of the invention and the technical problem actually solved by the invention. The third and final step is determining whether or not the claimed invention is obvious to a person skilled in the relevant field of technology.
4.7.6.1.1 Determination of distinguishing technical features
In an appeal of an administrative dispute over the invalidation of an invention patent, Oerlikon Textile GmbH v. Zhejiang Yuejian Intelligent Equipment Co.,145 the Supreme People’s Court held that the inventive concept of an invention is considered when determining the technical differences between the invention and the closest prior art. If the inventive concept of the invention is the combination of corresponding technical elements, and the prior art has neither explicitly nor implicitly disclosed the teachings of such a combination nor disclosed the technical effects that can be produced by such a combination, then such a combination of technical elements claimed by the invention should be treated as a whole in determining the distinguishing technical features. It is inappropriate to determine the distinguishing technical features based on a single technical element.
4.7.6.1.2 The technical problem actually solved
To determine the “technical problem actually solved” – as mentioned in the second step of the three-step approach – the distinguishing technical features of the claimed invention, when compared with the closest prior art, are first analyzed. The technical problem actually solved by the invention is then determined based on the technical effects that the distinguishing technical features achieve in the claimed invention.
Article 13 of the Provisions on Patent Grant and Confirmation stipulates the following:
Where the technical effects that the distinguishing features achieve in the technical solution defined in the claims are not specified in the description and the drawings attached, the people’s court may determine the technical problem actually solved that can be identified by a person skilled in the relevant field of technology based on the general common knowledge in the art, the relationship between the distinguishing technical features and other technical features in the claims, and the role of distinguishing technical features in the technical solution defined in the claims.
If the determination made by the accused decision fails to identify or incorrectly identifies the technical problem actually solved by the claims, the people’s court’s assessment of the inventiveness of the claims in accordance with the law shall not be affected.
In a retrial of an administrative dispute over the invalidation of an invention patent, Edan v. Patent Reexamination Board,146 the Supreme People’s Court held that “the technical problem actually solved by the invention” refers to the technical task that improves the closest prior art to achieve better technical effects. The technical problem is identified by comparing the invention with the closest prior art rather than on the basis of the background art described in the description.
In a retrial of an administrative dispute over the reexamination of the rejection of an invention patent application, Strix Ltd v. Patent Reexamination Board,147 the Supreme People’s Court held that the functions and technical effects of distinguishing technical features are the fundamental basis for identifying the technical problem actually solved by the claims. When identifying the functions and technical effects, the people’s court shall pay attention to whether the technical solution defined in the claims corresponds to the technical solution with specific functions and technical effects described in the description. If there is a substantial difference between them, the functions and technical effects that can be achieved by the distinguishing technical features shall then be determined according to the specific circumstances of the technical solution defined in the claims.
In an appeal of an administrative dispute over the invalidation of a utility model patent, China National Intellectual Property Administration v. Shandong Haowo Electric Co.,148 the Supreme People’s Court held that, when determining the technical problem actually solved by the invention, the people’s court shall neither underestimate the inventiveness of the patent by demanding generalization nor overestimate the inventiveness by simply regarding the roles, functions or technical effects of the distinguishing technical features in the patented technical solution as the technical problem actually solved by the invention.
4.7.6.1.3 Technical motivation
Technical motivation should be determined in light of the prior art as a whole – that is, whether there is the technical motivation of applying the distinguishing technical features to the closest prior art to solve the existing technical problem (i.e., the technical problem actually solved by the invention). The technical motivation prompts a person skilled in the relevant field of technology to improve the closest prior art and reach the claimed invention when confronted with a technical problem. Under the following circumstances, it is usually held there exists such a technical motivation in the prior art:
- The distinguishing technical features are common knowledge (e.g., customary means in the art, or technical means disclosed in textbooks or reference books, to solve the redetermined technical problem).
- The distinguishing technical features are technical means related to the closest prior art (e.g., technical means disclosed in other parts of the same reference document, and such means are the same as the function of the distinguishing features in the claimed invention in solving the redetermined technical problem).
- The distinguishing technical features are relevant technical means disclosed in another reference document, and such means are the same as the function of the distinguishing technical features in the claimed invention in solving the redetermined technical problem.
In a retrial of an administrative dispute over the invalidation of an invention patent, Ningbo Zhantong Telecom Equipment Co. v. Patent Reexamination Board,149 the Supreme People’s Court held that the technical solution of the patent in this case was a whole and that the technical features contained in it were not isolated. Therefore, the technical features could not be separated, and their function in the entire technical solution could not be ignored. When determining whether a certain technical feature in the prior art is the same as or equivalent to an essential technical feature of the patent, the people’s court shall consider whether it plays the same role in the respective technical solutions.
In an appeal of an administrative dispute over the reexamination of the rejection of an invention patent application, China National Intellectual Property Administration v. Erasmus University Medical Center,150 the Supreme People’s Court held that, when confronted with the technical problem to be solved, the technical motivation that a person skilled in the relevant field of technology can learn from the prior art must, in principle, be specific and definite technical means rather than abstract ideas or general research directions. Determining the technical motivation of the prior art based only on the consistency of a research direction or abstract and general demands in the technical field may result in the mistake of ex post facto analysis, and the inventiveness of the invention may be underestimated.
In an appeal of an administrative dispute over the invalidation of a utility model patent, Shenzhen DJ Lingmou Technology Co. v. China National Intellectual Property Administration,151 the Supreme People’s Court held as follows: whether the raising of a new technical problem or the discovery of a technical defect in the prior art is considered in the assessment of inventiveness depends on the specific circumstances of the case. In certain circumstances, “raising a new technical problem” and “discovering a technical defect” may be more important than “solving a technical problem.” In the assessment of inventiveness, a lack of consideration as to whether the problem raised is obvious to a person skilled in the relevant field of technology may lead to the mistake of ex post facto analysis.
4.7.6.2 Assessment of obvious progress
When evaluating whether or not an invention represents obvious progress, the main consideration should be whether or not the invention produces advantageous technical effects. Usually, an invention is regarded as producing advantageous technical effects and representing obvious progress when:
- the invention produces better technical effects compared with the prior art;
- the invention provides a technical solution with a different technical concept that can produce technical effects that are substantially the same level as those of the prior art;
- the invention represents a new trend of technical development; or
- despite negative effects in some aspects, the invention produces outstanding positive technical effects in other aspects.
4.7.6.2.1 Other factors to be considered in the assessment of inventiveness
4.7.6.2.2 Producing unexpected technical effects
The technical effect of an invention is an important factor in the assessment of inventiveness. If, compared with the prior art, the technical effects produced by the invention obviously represent a qualitative change, or a quantitative change that cannot be reasonably expected by a person skilled in the relevant field of technology, then unexpected technical effects are produced. When determining whether there are unexpected technical effects, it is necessary to comprehensively consider the characteristics of the technical field to which the invention pertains, especially the predictability of the technical effects and the technical motivation in the prior art.
In a retrial of an administrative dispute over the invalidation of an invention patent, Boehringer Ingelheim GmbH v. Patent Reexamination Board,152 the Supreme People’s Court assessed the inventiveness of a novel crystalline compound and held that, although crystalline compounds may differ in physical and chemical parameters due to differing molecular arrangements, they are still compounds. Thus, the provisions related to the inventiveness of chemical inventions in the Guidelines for Patent Examination are applicable to the assessment of their inventiveness. For the assessment of the inventiveness of crystals, the microscopic crystal structure is to be considered in conjunction with whether or not it brings unexpected technical effects.
4.7.6.2.3 Achieving commercial success
When it is difficult to assess the inventiveness of a technical solution with the three-step approach, or it is preliminarily concluded that a technical solution lacks inventiveness, from the perspective of the motivational effect on society and the economy, commercial success can be considered. If the technical solution’s commercial success is attributed to other reasons, such as an advance in selling skills or advertising, it is not used as a basis for assessing inventiveness.
In a retrial of an administrative dispute over the invalidity of a utility model patent, Patent Reexamination Board v. Hu Ying,153 the Supreme People’s Court held that commercial success is a secondary consideration in the assessment of inventiveness. What is to be assessed is whether the invention or utility model has truly achieved commercial success and whether the commercial success is directly brought about by the technical features of the technical solution of the invention or utility model (which are improved compared with the prior art), rather than by other factors. The immediate cause for the commercial success of an invention or utility model shall be emphasized in assessing inventiveness. Therefore, in such cases, it is necessary to conduct a detailed analysis of the causes of commercial success to exclude the influence of factors other than the technical features on that success.
4.7.6.2.4 Determination of opposite teachings
In a retrial of an administrative dispute over the invalidation of an invention patent, Chongqing Lifan Automobile Sales Co. v. China National Intellectual Property Administration,154 the Supreme People’s Court held that an “opposite teaching” determined in the accused’s decision is usually relative to technical motivations. When considering whether or not there is an opposite teaching in the prior art, the people’s court shall make the analysis and determination based on the knowledge and cognitive abilities of a person skilled in the relevant field of technology and take the prior art as a whole. For a patent document constituting a prior art, the technical defect recorded in the background art is considered the subjective perception of the patent applicant rather than the objective knowledge of a person skilled in the relevant field of technology. A person skilled in the relevant field of technology shall not necessarily be limited by the content related to the technical defect and therefore be unable to find corresponding technical motivation from the prior art. Moreover, even if a technical defect is indicated, it is still necessary to consider whether the technical defect is related to the technical problem actually solved by the distinguishing technical features and to the determination of the technical motivation.