First trial case number: (2018) Beijing 73 Administrative Judgement No. 2154

Second trial case number: (2019) Supreme People’s Court Intellectual Property Tribunal Administrative Final Judgement No. 127

【The main takeaway of the trial】

Patent application creativity, full disclosure of patent specifications, and claims should be supported by the description of the law. The authorization conditions stipulated in the law have different functions in the patent law. In principle, the content that should be reviewed should be included in creativity. It should be considered in the judgment, otherwise, it may not only make the creative judgment unbearable but also restrict the applicant from substantively debating the authorization conditions such as the full disclosure of the specification, and the claims should be supported by the specification.

【Case Introduction】

Appellant (defendant in the original trial): China National Intellectual Property Administration

Appellee (plaintiff in the original trial): Medical Center of Erasmus University Rotterdam (referred to as Rotterdam Medical Center)

Appellee (plaintiff in the original trial): Roger Kingdon Craig (referred to as Craig)

Rotterdam Medical Center and Craig, as applicants for invention patents, filed an application for an invention patent titled "Binding Molecule" on July 22, 2005. The application number is 201210057668.0. The earliest priority date is July 22, 2004, and the disclosure date is September 12, 2012. After the substantive examination, the original examination department of the China National Intellectual Property Administration rejected the application on October 8, 2015. Rotterdam Medical Center and Craig refused to accept the above rejection decision and submitted a request for review to the China National Intellectual Property Administration on January 22, 2016. After passing the formal examination, the China National Intellectual Property Administration accepted the reexamination request on February 26, 2016, and forwarded it to the original examination department for pre-examination. The original examination department insisted on the original rejection decision in the preliminary examination opinion. Subsequently, the China National Intellectual Property Administration established a collegiate panel to review the case. China National Intellectual Property Administration issued a review notice to Rotterdam Medical Center and Craig on January 20, 2017. On the basis of the above procedure, the China National Intellectual Property Administration made a decision on September 5, 2017. The Rotterdam Medical Center and Craig refused to accept the decision and filed an administrative lawsuit in the Beijing Intellectual Property Court.

Beijing Intellectual Property Court's original trial decision: Revoking the decision, China National Intellectual Property Administration re-examined the decision of the Rotterdam Medical Center and Craig's request for rejection of the patent application for the invention with the application number 201210057668.0 and named "binding molecule". The first-instance case acceptance fee of RMB 100 shall be borne by the China National Intellectual Property Administration. China National Intellectual Property Administration refused to accept the judgment of the original trial court and appealed to the Supreme People's Court.

The second instance of the Supreme People's Court held that the facts found in the original judgment were basically clear and the applicable laws were correct and should be maintained. The appeal request of China National Intellectual Property Administration could not be established and should be rejected. The judgment was as follows: the appeal was dismissed, and the original sentence was upheld. The case acceptance fee for the second instance of RMB 100 shall be borne by the China National Intellectual Property Administration.

【Typical meaning】

According to the provisions of the Patent Law of China, in the substantive examination procedure of patents, patent examiners need to examine the so-called "three natures" of the novelty, creativity, and practicality of patent applications, at the same time, the authorization conditions such as whether the specification is fully disclosed, whether the claims are supported by the specification, and whether the amendment is out of range, etc. need to be reviewed. The Patent Law has made various provisions on the authorization conditions, each of which has its own purpose and function. Patent examiners must comprehensively examine whether patent applications meet various authorization conditions in the patent substantive examination process, and cannot attend to one thing and lose another, substitute one thing with another, or confuse each other.

The focus of the dispute, in this case, is whether the patent application involved in the case possesses the creativity required by the Patent Law. In the "problem-solution" idea used in creative judgments, three steps are generally followed: determining the closest prior art; determining the distinguishing features of the invention and the technical problems actually solved by the invention; judging whether the claimed invention is obvious to a person of ordinary skill in the art. In the second step, when determining the problems actually solved by the invention, the closest prior art is usually used as a reference. Based on the analysis of the distinguishing features of the invention compared with the closest prior art, the technical effects that the distinguishing features as a whole can achieve are determined.

In this case, China National Intellectual Property Administration's appeal claims raised the issue of whether this application discloses the preparation of water-soluble heavy chain-only antibody and whether there are data support and verification. This is essentially a review of the authorization condition of whether the specification is fully disclosed and should not be considered in the creative judgment. The court of the second instance clearly pointed out in this case that this approach objectively confuses different legal standards such as creative judgment and full disclosure of the specification, and claims should be supported by the specification. At the same time, the court of the second instance also clarified the relationship between technical problems, distinguishing features and technical effects. That is, the determination of the distinguishing characteristics is the basis for understanding the technical problem actually solved by the invention, and on the basis of this, the technical effects that can be obtained by a person of ordinary skill in the art after reading the contents described in the description are considered.