An International Guide to
Patent Case Management for Judges

4.7 Administrative cases involving invention and utility model patent grant and confirmation

4.7.1 Administrative cases

Article 1 of the Provisions on Patent Grant and Confirmation defines administrative cases involving patent grant and confirmation as:

For the purposes of these Provisions, “administrative case involving the grant of a patent” means a case in which a patent applicant files a lawsuit with the people’s court against a decision on a patent reexamination request made by the patent administrative department of the State Council.

For the purposes of these Provisions, “an administrative case involving the confirmation of a patent” means a case in which a patentee or a person requesting the declaration of invalidation of a patent, files a lawsuit with the people’s court against a decision on the examination of a request for declaring the invalidation of a patent made by the patent administrative department of the State Council.

For the purposes of these Provisions, “the accused decision” means a decision made by the patent administrative department of the State Council with respect to a request for declaring the invalidation of a patent or a request for reexamination.

Article 44 paragraph 1, Article 53, and Article 65 paragraph 2 of the Rules for the Implementation of the Patent Law specify that the relevant provisions based on which a patent application is rejected or a patent declared invalid are those of the substantive laws involved in the administrative cases involving patent grant and confirmation.

The people’s courts hear cases involving patent grant and confirmation in accordance with the Patent Law, the Rules for the Implementation of the Patent Law, and the Provisions on Patent Grant and Confirmation. The Guidelines for Patent Examination are administrative regulations and may be referred to when people’s courts hear administrative cases involving patent grant and confirmation according to Article 63 paragraph 3 of the Administrative Procedure Law. When people’s courts hear administrative cases involving patent grant and confirmation, the procedural issues refer to the provisions of the Administrative Procedure Law and relevant judicial interpretations.

4.7.2 Examination of a patent’s subject matter

4.7.2.1 The subject matter of invention and utility model patents

Article 2 paragraphs 2 and 3 of the Patent Law define inventions and utility models, respectively: “‘Invention’ means any new technical solution proposed for a product, a process, or the improvement thereof. ‘Utility model’ means any new technical solution proposed for the shape, the structure, or their combination, of a product, which is fit for practical use.”

4.7.2.2 Circumstances where no patent shall be granted

4.7.2.2.1 Violation of the law or of social morality, or detrimental to public interests

Article 5 paragraph 1 of the Patent Law stipulates the following: “No patent shall be granted for invention-creation that violates laws or social morality or is detrimental to the public interests.” In this paragraph, “violates laws” means that the purpose of the invention is against the law. Where the purpose of the invention does not violate the law, but its abuse may be contrary to the law, the invention will not be excluded from patent protection.

4.7.2.2.2 Violation of regulations related to genetic resources

Article 5 paragraph 2 of the Patent Law specifies the following: “No patent right shall be granted for invention-creation where the acquisition or utilization of the genetic resources, on which the development of the invention-creation relies, violates the provisions of laws and administrative regulations.” This provision was added in the 2008 Patent Law.

4.7.2.2.3 Circumstances stipulated in Article 25 of the Patent Law

According to Article 25 of the Patent Law,

[N]o patent right shall be granted [for]:

1. (1) scientific discoveries;
2. (2) rules and methods for intellectual activities;
3. (3) methods for the diagnosis or treatment of diseases;
4. (4) animal and plant varieties species; [and]
5. (5) nuclear transformation methods and substances obtained by means of nuclear transformation.

Regarding the invention of the medical use of chemical substances, in a retrial of an administrative dispute over the invalidation of an invention patent right, Cubist Pharmaceuticals v. Patent Reexamination Board,¹³⁶ the Supreme People’s Court held that an application related to the medical use of a substance shall not be granted if its claims are drafted using the wording “for the treatment of diseases,” “for diagnosis of diseases” or “use of substance X as a medicament” because such claims are ones for “method for the diagnosis or treatment of disease” as referred to in the Patent Law. However, since a medicament and its method of manufacture are patentable, an application related to the medical use of a substance adopting a pharmaceutical or use claim in the form of “use of a substance for the manufacturing of a medicament” or “use of a substance for the manufacturing of a medicament for the treatment of a disease” is not excluded by the Patent Law.

4.7.3 Interpretation of claims

Article 64 paragraph 1 of the Patent Law provides the following: “For the patent right of an invention or a utility model, the scope of protection shall be confined to the content of the claims. The description and the drawings attached may be used to interpret the content of the claims.” In cases involving patent grant and confirmation, it is necessary to interpret the claims to determine the meaning of the disputed content in the claims and, therefore, whether the claims meet the relevant provisions of the Patent Law and the Rules for the Implementation of the Patent Law.

4.7.3.1 Relevant provisions in the Provisions on Patent Grant and Confirmation

Article 2 of the Provisions on Patent Grant and Confirmation stipulates the following:

The people’s court shall interpret the terms used in the claims based on the ordinary meaning understood by a person skilled in the relevant field of technology after reading the claims, specifications and drawings attached. If the terms used in the claims are clearly defined or explained in the specification and drawings attached, such definitions shall be adopted.

The terms that cannot be defined according to the provisions of the preceding paragraph may be defined based on the technical dictionaries, technical manuals, reference books, textbooks, and national or industry technical standards, inter alia, generally used by a person skilled in the relevant field of technology.

According to these provisions, for administrative cases involving patent grant and confirmation, the people’s court should also follow the principle of “intrinsic evidence first” when defining the terms of the claims. This provision is consistent with those of Articles 2–3 of the Interpretation of Patent Infringement Dispute Cases.

Article 3 of the Provisions on Patent Grant and Confirmation clearly indicates that the people’s courts may, when interpreting terms in the claims, “refer to relevant statements of the patentee that have been adopted by an effective judgment of a civil case involving patent infringement.” The purpose of this provision is to guide and motivate patentees to make cautious and honest statements during patent confirmation procedures and infringement proceedings and to interpret the terms of the claims. This is so as to prevent them from making different statements and thus gain benefits in different proceedings.

Article 4 stipulates that, where there is any manifest error or ambiguity in the claims, descriptions or drawings attached, the people’s court shall “correct” that error based on the sole understanding gained by a person skilled in the relevant field of technology after reading the claims, descriptions and drawings attached. This provision is consistent with Article 4 of the Interpretation (II) of Patent Infringement Dispute Cases.

Regarding technical features defined by functions or effects, Article 9 paragraph 1 of the Provisions on Patent Grant and Confirmation is consistent with Article 8 paragraph 1 of the Interpretation (II) of Patent Infringement Dispute Cases (see Section 4.3.1.4 of this chapter for further detail). Article 9 paragraph 2 of the Provisions on Patent Grant and Confirmation further provides that, if the description and drawings attached disclose no embodiments corresponding to the functional features, the people’s court can determine that it fails to fulfill the requirements of Article 26 paragraph 3 of the Patent Law. Therefore, a patentee must disclose at least one embodiment corresponding to the functional feature in the description to comply with the provision that the invention be sufficiently disclosed in the description.

4.7.3.2 Related typical cases

In a retrial of an administrative dispute over the invalidation of an invention patent, Seiko Epson Corp. v. Patent Reexamination Board,¹³⁷ the Supreme People’s Court held as follows: when comparing patent grant and confirmation procedures and civil proceedings for patent infringement, the interpretations of the content of claims are highly consistent yet different to a certain extent. Consistency is reflected in at least two aspects. First, claim interpretation is a kind of text interpretation and should follow the general rules of text interpretation both in patent grant and confirmation procedures and in civil proceedings for patent infringement. Second, the same general rules of claim interpretation should be followed both in patent grant and confirmation procedures and in civil proceedings for patent infringement. However, due to the different purposes of claim interpretation in patent grant and confirmation procedures and in civil proceedings for patent infringement, there are certain differences between them in specific circumstances. One difference is in the role of the observations submitted by parties: in patent grant and confirmation procedures, the applicant’s observations, as recorded in the examination files, are generally used as a reference for facilitating the understanding of claims and descriptions rather than as conclusive evidence.

4.7.4 Avoidance of double patenting

Article 9 of the Patent Law stipulates the following:

For any identical invention-creation, only one patent shall be granted. However, where the same applicant files applications for both a utility model patent and an invention patent with regard to the identical invention-creation on the same day, if the utility model patent granted earlier has not been terminated and the applicant declares to abandon the utility model patent, the invention patent may be granted.

If two or more applicants file patent applications for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

The main consideration of this provision is that, to avoid conflicts between patent rights, no more than one patent right can be granted for identical invention-creations. The provision that “the patent right shall be granted to the applicant whose application was filed first” reflects the first-to-file principle.

In a retrial of an administrative dispute over the invalidation of an invention patent, Jining Pressureless Boiler Factory v. Patent Reexamination Board,¹³⁸ the Supreme People’s Court held that the “identical invention-creation” referred to in the Patent Law means patent applications or patents with the same protection scope. For such applications or patents, a judgment can be made by simply comparing the content of the claims. It was also held that, for the purpose of the Patent Law, the principle of avoidance of double patenting means that two or more valid patents for identical invention-creations cannot co-exist, not that the patent can be granted for the identical invention-creations only once.

4.7.5 Novelty

Article 22 paragraph 2 of the Patent Law stipulates the following:

Novelty means that, the invention or utility model does not form part of the prior art; no entity or individual has filed a patent application for the identical invention or utility model with the patent administration department under the State Council before the filing date and the content of the application is disclosed in patent application documents published or patent documents announced after the filing date.

Determining novelty involves two aspects: first, that the invention or utility model does not “form part of the prior art” and, second, that there is no “conflicting application” – that is, no patent application has been filed for an identical invention or utility model with the patent administration department before the filing date and subsequently recorded in the patent application documents or patent documentations that are published or announced after the filing date. The expression “no entity or individual” in Article 22 paragraph 2 of the Patent Law means that conflicting applications also include prior (i.e., filed before the filing date) patent applications filed by the patent applicant.

4.7.5.1 Prior art

Prior art is a fundamental concept in Patent Law. Its assessment has an important impact on the trial of cases involving patent grant and confirmation. When the Patent Law was amended for the third time in 2008, the concept of “prior art” was added to Article 22 paragraph 5: “Prior art means any technology known to the public domestically and/or abroad before the filing date of patent application.” To improve the quality of patents, the criterion determining prior art was changed to “absolute novelty” – that is, “prior art” referred to technologies known to the public domestically or abroad before the filing date, irrespective of how it was disclosed.

The technical content disclosed in prior art and in conflicting applications includes both the technical content clearly recorded therein and the technical content that can be directly and undoubtedly determined by a person skilled in the relevant field of technology.

Regarding whether the materials filed and recorded as an enterprise’s standards constitute prior art under the Patent Law, in a retrial of an administrative dispute over the invalidation of a utility model patent, Textile Machinery Co. v. Patent Reexamination Board,¹³⁹ the Supreme People’s Court held that the filing and recording of such materials do not mean that the specific content of the standards has been publicized or made freely accessible and available to the public; therefore, such materials do not constitute prior art under the Patent Law.

In an appeal of an administrative dispute over the invalidation of a design patent, Liu Xiaosheng v. Chaozhou Chaoan Xiangxingfa Electronic Technology Co.,¹⁴⁰ the Supreme People’s Court held that, when determining whether information in cyberspace that requires authorization to access (such as found in Qzone and WeChat Moments) constitutes prior design or prior art, a people’s court should make a comprehensive analysis on the main purpose of the cyberspace, the upload time, accessibility of the information and so on and make the judgment based on whether the information was publicly available before the filing date of the patent. If a cyberspace requiring access authorization is primarily for commercial use, then it may be presumed that that cyberspace is accessible to the public unless there is evidence to the contrary.

Regarding the determination of prior art, in an appeal of an administrative dispute over the invalidation of an invention patent, Beijing Baidu Netcom Science and Technology Co. v. China National Intellectual Property Administration,¹⁴¹ the Supreme People’s Court held that “known to the public” means that the public could know the prior art if they want to, rather than that the public actually knows. It also held that, where a party claims prior art by virtue of a physical object, they must clarify the claimed prior technical solution and the corresponding relationship between the object and the solution and produce sufficient evidence to prove or fully explain how the public can intuitively obtain the technical solution from the physical object.

4.7.5.2 Criteria for examining novelty

When determining whether an invention or utility model patent forms part of the prior art or whether there is any conflicting application, the people’s courts consider whether the patented technical solution is substantially the same as any technical solution disclosed in the prior art or in a potentially conflicting application and whether it could be used in the same technical field, solve the same technical problem or have the same expected effect.

The assessment of novelty adopts the principle of separate comparison – that is, separately comparing each of the claims with the relevant technical content disclosed in each item of the prior art or conflicting application rather than comparing a combination of the contents disclosed in multiple items of the prior art or conflicting application or a combination of several technical solutions disclosed in one reference document.

In an appeal of an administrative dispute over the invalidation of an invention patent, Tong Kening v. Zhejiang Shuangyu Industrial Co.,¹⁴² the Supreme People’s Court held that, when determining the novelty of an invention patent, the people’s court should adhere to the principle of separate comparison and compare each of the claims with each prior art separately, rather than with the combination of two or more technical solutions disclosed in one or more reference documents.

In an appeal of an administrative dispute over the reexamination of the rejection of an invention patent application, Albemarle Corp. v. China National Intellectual Property Administration,¹⁴³ the Supreme People’s Court held that, if the prior art has disclosed the compound for which the patent application or the patent seeks protection, then it can be presumed that the application or patent does not have novelty unless the applicant or patentee can provide evidence proving that the compound could not be manufactured before the filing date.

4.7.5.3 Grace period concerning novelty

With respect to the “grace period” concerning novelty, Article 24 of the Patent Law provides the following:

Within six months before the filing date, an invention-creation for which a patent application is filed does not lose its novelty under any of the following circumstances:

1. (1) where it was made public for the first time for the public interests when a state of emergency or an extraordinary situation occurred in the country;
2. (2) where it was exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government;
3. (3) where it was published for the first time at a prescribed academic or technological conference; [or]
4. (4) where its contents are divulged by another person without the consent of the applicant.

In an appeal of an administrative dispute over the invalidation of a design patent, Beijing Qihoo Technology Co. v. China National Intellectual Property Administration,¹⁴⁴ the Supreme People’s Court held that, if another person, within six months before the filing date, violates the expressed or implied obligation of confidentiality under social values or business practices, and the patentee or patent applicant claims that the novelty of the invention-creation should not be taken away because of such a violation, then such a claim should be supported by the people’s court.

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.

4.7.7 Practical use

Article 22 paragraph 4 of the Patent Law stipulates the following: “Practical use means that the invention or utility model can be manufactured or used and can produce positive effects.” In a retrial of an administrative dispute over the reexamination of the rejection of an invention patent application, Gu Qingliang v. Patent Reexamination Board,¹⁵⁵ the Supreme People’s Court held that “can be manufactured or used” means that the technical solution of the invention or utility model can be made or used in an industry. The practical use of an invention patent application means that the technical solution itself conforms with the laws of nature, can be applied in practice and can be reproduced industrially. In this case, the application in dispute violated the law of conservation of energy and thus could not be manufactured or used in industry.

4.7.8 Claims shall be clearly defined

Article 26 paragraph 4 of the Patent Law provides the following: “The claims shall be based on the description, and clearly and concisely define the scope of protection conferred by the patent.”

Article 7 of the Provisions on Patent Grant and Confirmation stipulates the following:

Where, based on the description and drawings attached, a person skilled in the relevant field of technology is of the opinion that the claims fall under any of the following circumstances, the people’s court shall determine that the claims fail to comply with the provisions of paragraph 4, Article 26 of the Patent Law on clearly defining the scope of patent protection:

1. (1) The type of subject matter of the invention is not specified;
2. (2) The meaning of technical features in the claims cannot be reasonably determined; and
3. (3) There are evident contradictions between technical features, and such contradictions cannot be reasonably explained.

That the claims should be clear means, first, that each claim should be clear and, second, that all the claims should be clear as a whole.

4.7.9 Sufficient disclosure of the description

Article 26 paragraph 3 of the Patent Law stipulates the following: “The description shall contain a clear and comprehensive description of the invention or utility model so that a person skilled in the relevant field can carry it out.” In judicial practice, this requirement for the description is generally referred to as “sufficient disclosure.”

4.7.9.1 Relevant provisions in the Provisions on Patent Grant and Confirmation

Article 6 paragraph 1 of the Provisions on Patent Grant and Confirmation stipulates the following:

Where the failure to sufficiently disclose specific technical content in the description results in any of the following circumstances on the filing date, the people’s court shall determine that the description and claims relating to the specific technical content fail to comply with paragraph 3, Article 26 of the Patent Law:

1. (1) The technical solution specified in the claims cannot be implemented;
2. (2) The technical problem of the invention or utility model can’t be solved by implementing the technical solution defined in the claims; and
3. (3) To determine whether the technical solution defined in a claim can solve the technical problem of the invention or utility model, excessive work is indispensable.

Where specific technical content is not sufficiently disclosed in the description, the people’s court will determine that the specific claims related to the specific technical content violate the provisions of Article 26 paragraph 3 of the Patent Law rather than generally determining that the entire patent or all claims do not comply with those provisions.

Regarding supplementary experimental data, Article 10 of the Provisions on Patent Grant and Confirmation stipulates the following: “Where a pharmaceutical product patent applicant submits supplementary experimental data after the filing date to prove that the patent application is in conformity with paragraph 3, Article 22 and paragraph 3, Article 26 of the Patent Law, among other provisions, the people’s court shall examine the data.”

4.7.9.2 Relevant typical cases

Regarding the relationship between the inventiveness and the sufficient disclosure of the description, in an appeal of an administrative dispute over the reexamination of the rejection of an invention patent, China National Intellectual Property Administration v. Erasmus University Medical Center,¹⁵⁶ the Supreme People’s Court held that the two have different functions in patent law and follow different logics. In principle, what should be examined under the legal requirements of sufficient disclosure should not be taken into consideration in the assessment of inventiveness.

With regard to the sufficient disclosure of the description of a compound product invention, in a retrial of an administrative dispute over the invalidation of an invention patent, Patent Reexamination Board v. Warner-Lambert Co.,¹⁵⁷ the Supreme People’s Court held the following:

• To comply with the provisions of Article 26 paragraph 3 of the Patent Law, all three requirements – that the specified technical solution can be implemented, that the technical problems can be solved and that the expected results can be produced – must be met at the same time. The people’s court shall first determine whether a person skilled in the relevant field of technology can implement the technical solution according to the content disclosed in the description. It will then determine whether the technical problem can be solved and whether the desired technical effects are produced. It is pointless to confirm, before determining whether the technical solution can actually be implemented, whether the technical solution can solve the corresponding technical problems and achieve the technical effects in comparison with the prior art.
• The identification, manufacture and use of the chemical product shall be recorded in the description of the chemical product invention.

If the invention is a compound, the description must state the chemical structure of the compound and the chemical and physical performance parameters related to the technical problem to be solved by the invention so that a person skilled in the relevant field of technology can clearly identify the chemical product based on that description.

Regarding the determination of sufficient disclosure regarding a product invention in the field of chemistry, in a retrial of an administrative dispute over the reexamination of the rejection of an invention patent application, Mitsubishi Tanabe Pharma Corp. v. Patent Reexamination Board,¹⁵⁸ the Supreme People’s Court held that the requirements for the disclosure of the uses and effects of such inventions are determined by the characteristics of inventions in that field. In most cases, it is difficult to predict, without experimental evidence, whether a chemical invention can be implemented and what uses or effects it has. Therefore, where a person skilled in the relevant field of technology would not be able to predict, based on the prior art, whether a novel compound has the uses or effects described in the description, the patent description must specify the qualitative or quantitative experimental data showing that the compound can achieve the stated uses or the expected effects.

4.7.10 Claims shall be supported by the description

Article 26 paragraph 4 of the Patent Law stipulates the following: “The claims shall be based on the description, and clearly and concisely define the scope of protection conferred by the patent.”

4.7.10.1 Relevant provisions in the Provisions on Patent Grant and Confirmation

Regarding the stipulation in the Patent Law that claims be supported by the description, Article 8 of the Provisions on Patent Grant and Confirmation further stipulates the following:

If after reading the description and drawings attached, a person skilled in the relevant field of technology can not directly reach or reasonably generalize the technical solution as defined in a claim on the filing date, the people’s court shall determine that the claim fails to comply with the provisions of paragraph 4, Article 26 of the Patent Law that “the claims shall be based on the description.”

The main consideration of this provision is that patentees and patent applicants may reasonably generalize a claim on the basis of the technical content disclosed in the description and attached drawings rather than being limited to the embodiments. Accordingly, the protection scope of a patent is adaptive to the technical contribution, the degree of innovation and the technical content disclosed in the description.

As provided in Article 6 paragraph 2 of the Provisions on Patent Grant and Confirmation, where a concerned party’s argument that a claim complies with the provision of Article 26 paragraph 4 of the Patent Law is based only on specific technical content that is insufficiently disclosed in the description, the people’s court shall reject such an argument.

4.7.10.2 Relevant typical cases

In a retrial of an administrative dispute over the invalidation of an invention patent, Sensing Electronics Co. v. Patent Reexamination Board,¹⁵⁹ the Supreme People’s Court held that “[b]ased on the description” in Article 26 paragraph 4 of the Patent Law primarily involves the relationship between the claims and the description. Accordingly, relevant content in the description shall be used as the basis for determining the technical problem solved and the technical effect achieved by the patent. Even if the claims have inventiveness, it is still necessary to determine whether the technical features recited in the claims (including the distinguishing technical features) and the technical solutions defined by the claims as a whole are appropriately generalized in accordance with Article 26 paragraph 4 of the Patent Law.

In an appeal of an administrative dispute over the invalidation of an invention patent, Ren Xiaoping v. Apple Electronic Products Commerce (Beijing) Co.,¹⁶⁰ the Supreme People’s Court held that a claim that defines the protection scope using two or more different numerical-range technical features is considered to be supported by the description if a person skilled in the relevant field of technology can find a correspondence between those technical features and figure out the specific exploitation method in line with the purpose of the invention through a limited number of experiments and can exclude technical solutions that cannot achieve the invention’s purpose of the invention without excessive labor.

4.7.11 An independent claim shall state the essential technical features necessary for the solution of the technical problem

Article 20 paragraph 2 of the Rules for the Implementation of the Patent Law stipulates the following: “The independent claim shall outline the technical solution of an invention or utility model and state the essential technical features necessary for the solution of the technical problem.” According to this provision, it is only necessary to consider whether the independent claim lacks the essential technical features. If an independent claim is declared invalid or abandoned, or other claims dependent on the independent claim become new independent claims, then these provisions shall also be complied with.

Regarding the determination of the lack of essential technical features and its relationship with the requirement that the claims be supported by the description, in a retrial of an administrative dispute over the invalidation of an invention patent, Elecon Asia SA v. Patent Reexamination Board,¹⁶¹ the Supreme People’s Court held that, in determining whether an independent claim lacks essential technical features, the key is whether the independent claim has recited the essential technical features for solving the technical problem – that is, whether or not there are essential technical features. As to whether the essential technical features are adequately generalized and whether they can be supported by the description, such an examination shall be made separately, in accordance with Article 26 paragraph 4 of the Patent Law.

4.7.12 Amendments may not go beyond the scope of the disclosure contained in the original description and claims

Article 33 of the Patent Law stipulates the following:

An applicant may amend his or her patent application documents, but the amendment to the patent application documents for an invention or utility model may not go beyond the scope of the disclosure contained in the original description and the claims, and the amendment to the patent application documents for a design may not go beyond the scope of the disclosure as shown in the original drawings or photographs.

In judicial practice, such an amendment is also referred to as an “amendment going beyond the scope.”

4.7.12.1.1 Assessment

In a retrial of an administrative dispute over the invalidation of an invention patent, Zheng Yali v. Seiko Epson Corp.,¹⁶² the Supreme People’s Court held that the contents of the original description and claims include, first, the contents expressly recited in texts or graphics in the original description (and attached drawings) and claims; and second, the contents that can be directly and explicitly derived by a person skilled in the relevant field of technology after comprehensively considering the original description (and the attached drawings) and claims, as long as the derived content is obvious to a person skilled in the relevant field of technology.

In a retrial of an administrative dispute over the invalidation of an invention patent, Shimano v. Patent Reexamination Board,¹⁶³ the Supreme People’s Court held that “the contents contained in the original description and the claims” can be embodied by the content disclosed in text and graphics in the original description (and attached drawings) and claims and by the content that can be determined by a person skilled in the relevant field of technology based on the original description (and attached drawings) and claims. In determining whether the amendment of a patent application goes beyond the scope of disclosure contained in the original description and claims, the observations submitted by parties can only be used as a reference for understanding the description and claims rather than as conclusive evidence.

4.7.12.1.2 Amendment of claims in invalidation procedures

Article 69 of the Rules on the Implementation of the Patent Law provides as follows:

In the course of the examination of a request for invalidation, the patentee of the concerned invention patent or utility model may amend the claims but may not broaden the scope of protection of the original patent.

The patentee of the concerned invention patent or utility model shall not amend the description or drawings attached, and the patentee of the concerned design patent shall not amend the drawings, photographs, or the brief explanation of the design.

In the Guidelines for Patent Examination, the principles and manners of amendment in invalidation procedures are provided.

In an appeal of an administrative dispute over the invalidation of an invention patent, Alfa Laval Corporate AB v. China National Intellectual Property Administration,¹⁶⁴ the Supreme People’s Court held that, in invalidation procedures, amendments of claims must not go beyond the contents contained in the original description and claims and must not broaden the protection scope of the original patent. Accordingly, both the efficiency of administrative examination and the fair protection of the patentee’s contribution should be considered. It is inappropriate to impose an excessively strict restriction on the manners of amendment; otherwise, such restrictions will be a punishment for the claims inappropriately drafted. By adding to an independent claim the additional technical features recited in a dependent claim, the independent claim is further defined, and the protection scope of the original independent claim is narrowed rather than broadened. It does not impair the publicity effect of the original patent or harm the public’s reliance interest based on the original patent documents. Thus, such amendments shall be accepted.

In a retrial of an administrative dispute over the invalidation of an invention patent, Patent Reexamination Board v. Beijing Winsunny Pharmaceuticals Co.,¹⁶⁵ the Supreme People’s Court held that the principle of amendment of a Markush claim is that the amendment will not generate a single compound or class of compounds with new properties and functions; however, the specific circumstances in each case should be considered.