China: Inventive step

Under a general impression, experimental data originally recorded in the specification is always required to support inventive step of a Chinese chemical/biological patent application. However, two recent rulings by the Supreme People’s Court (SPC) may update our understanding on this, in a comparative manner.

When evaluating inventive step of a patent application, the problem-solution (also known as the three steps approach) is the standard applied in Chinese practice. In the second step of this approach, the technical problem solved by the application should be determined based on the technical effect of the distinguishing features.

According to the SPC, whether there is experimental data originally recorded in the specification to confirm this technical effect may not be considered as far as inventive step is concerned (case 1). However, when distinguishing features per se are not sufficient for establishing non-obviousness, the existence of unexpected technical effect becomes crucial. Experimental data will then be required to demonstrate the extent of unexpectedness (case 2).

Case 1

In the administrative dispute CNIPA v Erasmus University Medical Centre Rotterdam and Craig Roger Kingdon ([2019] SPC Zhi Xing Zhong No. 127), the patent application related to a subject matter of producing antibodies, which was rejected by the China National Intellectual Property Administration (CNIPA) for lack of inventive step, and later appealed up to the SPC.

During the prosecution, the CNIPA pointed out that there was no experimental data to support the technical effect as asserted by the applicants, and thus the technical problem as determined by the problem-solution approach should be understood in favour of the CNIPA.