The determination of non-obviousness in a patent is both the key and the difficult point for obtaining and challenging the patent in China; it is also a frequently encountered important problem in raising the defense against patent infringement in the U.S. With greater economic integration and interactions, more and more patent applications are filed in both China and U.S. As a result, patent owners would naturally expect the same inventions receive the same protection in China as in the U.S. For this reason, there is a practical need for harmonizing substantive patentability requirements, including non-obviousness, between China and the U.S. At present, the WIPO Standing Committee on Patent Law (SCP) is working to promote harmonization of substantive patent laws. However, it is far from reaching a consensus.

 

 

In China, the approach to the determination of non-obviousness of an invention is chiefly provided in The Guidelines for Patent Examination (Guidelines) promulgated by State Intellectual Property Office (SIPO) in 2010 and reflected in many judicial decisions related to patent examination and invalidation cases; whereas in the U.S., it is the case law that governs the determination standards over non-obviousness, and the Manual of Patent Examining Procedure (MPEP) of the U.S. Patent and Trademark Office (USPTO) merely summarizes the judicial determinations.

 

The 1993 version of the Guidelines did not provide any specific measure for determining non-obviousness.

 

In the 2001 version, it provided for the first time that “the obviousness or non-obviousness of the subject matter sought to be protected in relation to the prior arts” should be determined by taking three steps: (a) determining the most pertinent prior art; (b) ascertaining the distinguishing features of the invention and the technical problem sought to be solved by the invention; and (c) resolving the obviousness or non-obviousness of the invention sought to be patented to a person skilled in the relevant art. The 2006 and 2010 amended Guidelines further required “prominent substantive features” without altering the above “three-step” approach.

 

EPO usually adopts the “problem-solution” step for the determination of non-obviousness which includes: (a) determining the closest prior art; (b) determining the technological result acquired by the claimed invention in comparison with the closest prior art; (c) determining the technical problems tackled by the claimed invention; (d) determining whether the technicians in the field of the art are able to acquire the technical result by exploitation of the claimed invention according to the Article 54(2) of the European Patent Convention (EPC).

 

It is obvious that China adopts the EPC method in determining non-obviousness. Even though the Guidelines has delineated methods and steps in determining non-obviousness, it is nonetheless an administrative regulation, useful as a reference in judicial process, but not necessarily binding. Therefore, the people’s courts have no rules to abide by in determining non-obviousness, nor does the Supreme People’s Court provide any interpretation in this regard. In practice, many courts follow the three step method literally, but some go their own ways.

 

The U.S. Supreme Court interpreted of Section 103 of the U.S. Patent Act in the case of Graham v. John Deere Co. for the determination of non-obviousness in 1966, which was known to the public as the “Graham factors”: the scope and content of prior art ascertained, the differences between the prior art and the claims at issue resolved, and the level of ordinary skill in the pertinent art resolved; against this background, such secondary considerations may be used to evaluate obviousness, or non-obviousness, including commercial success, long felt but unsolved need, failure of others, etc. As the U.S. Supreme Court held in the case of KSR: although the significance of the four factors vary from case to case, they have been applied in the determination of obviousness all the time. The MPEP requires the examiner to review the non-obviousness according to the “Graham factors.” In order to achieve a more coherent judgment on non-obviousness determination, the U.S. Court of Appeals for the Federal Circuit (CAFC) developed the test of “teaching-suggestion motivation,” (TSM) which was firstly established by the U.S. Court of Customs and Patent Appeals (CCPA) in 1961. The Supreme Court re-affirmed the framework for the judgment of non-obviousness established in the cases of Graham v. John Deere Co. and KSR. However, it proposed some amending opinions to the TSM test because it thought the method was too stiff and formal.

 

In determining obviousness, the U.S. method stresses the skill level of a person of ordinary skill in the art, holding that the secondary considerations to be used should be used for the determination of technological background from the very beginning, and generally apply the TSM test in the last determining steps; whereas China and Europe stress the determination of objective technological problems and generally follow the step of “subjective-objective probabilities.” Therefore, some scholars believe that the “problem-solution approach” followed by EPO has more logic and relies less on experience in comparison with USPTO’s practice, and this may be attributed to the strong form of rational thinking in civil law jurisprudence.

 

China took from the EPO regulations, and from the U.S. case law as well in establishing its way of determining non-obviousness. There are several conspicuous statutory transplantations from the two patent systems. Furthermore, China has some similarities with the U.S. in the determination of non-obviousness in practice. Therefore, there may be a trend of substantial convergence of the approaches to the determination of non-obviousness of inventions in the future.

 

The first example of statutory transplantation is the adoption of the non-obviousness standard. The U.S. Patent Act of 1952 first adopted the standard, and China’s Guidelines followed suit. The “prominent substantive feature” requirement under China’s Guidelines, which requires an invention to have prominent substantive features, mandates a determination of obviousness or non-obviousness in the invention sought to be patented over the prior art by the standard of a person having ordinary skill.

 

The second example of conspicuous transplantation is China’s borrowing of the American terminology of the inventive manner. The last sentence of section 103(a) of the U.S. Invention Act provides: “Patentability shall not be negatived by the manner in which the invention was made.” There were some disagreements on this provision before it passed. Judge Rich, the framer of this provision, stressed that the “patentability should be determined by the technological advancement instead of the make of invention.” Though China’s Patent Law has no such provision, the 1993 Guidelines did have a similar wording which survived in the amended versions of the Guidelines. The 1993 Guidelines provided that “the way in which an invention is accomplished, either by hard toil or by a stroke of genius, shall not affect the evaluation of non-obviousness.”

A third example is the direct reference to American cases in the Guidelines. A 1979 CCPA case involving an invention of the graphitic braking discs to repel surface water through the grooves, which has been cited in the U.S. MPEP as an example to indicate that non-obviousness cannot be established by merely revealing the intrinsic properties of the existing technology. China’s Guidelines did not use this case in the 1993 and 2001 versions. However, the 2006 version did so in order to illustrate that “the said distinguishing feature is a relevant technical means disclosed in another reference document, the function of which in that reference document is the same as the function of the distinguishing feature in the claimed invention in solving the re-determined technical problem.”

Both China and the U.S. require the identification of the objective technical problem in order to determine non-obviousness. Such a provision first appeared in China’s 2001 Guidelines and remained in the 2006 and 2010 versions. In the course of examination, because the most pertinent prior art identified by the examiner may be different from that described by the applicant, the technical problem actually sought to be solved by the invention, which is re-determined on the basis of the most pertinent prior art, may not be the same as that described in the description. Under such circumstances, the technical problem actually sought to be solved by the invention shall be re-determined on the basis of the most pertinent prior art identified by the examiner.

 

It can be seen from this that China’s Guidelines has taken EPO’s relevant provisions as reference.

 

The U.S. MPEP also stipulates that the determination of obviousness shall not be affected by the difference between the reason for inventor’s improvement and the reason thought by the determiner as long as the invention can achieve the same technological advancement and effect, and that the technological suggestion shall be determined by the general problems faced by the inventor instead of the specific problems solved by the invention. The U.S. Supreme Court also emphasized that attention should be paid to objectivity in determination of technological problems, and that the determined technological problems may not be the same as the problems claimed by the applicant or patentee. Particularly, the Supreme Court pointed out four CAFC mistakes in the KSR case, and the first is that CAFC and the patent examiner only focused on the problems of “obvious to try.”

Both China and the U.S. require the identification of the technical suggestion for determining non-obviousness. China has three steps for the determination, stressing that the obviousness depends on whether or not there exists such a technical suggestion in the prior art. It is most analogous to the American TSM test. However, there are some decisions from China’s courts which took the opinion that failure to follow the footsteps the tripartite analysis would not necessarily constitute reasons for reversal; and whether to reverse depends on determination of substantive issues. This indicates that there some flexibilities in judicial practice for finding non-obviousness, sometimes by the general rules, and sometimes by the specific case conditions.

 

It is the mainstream opinion in the U.S. that the determination on the technical suggestion should not be too stiff and that the starting point and last criteria should depend on the obviousness of the claim as a whole. A patent may be granted to an invention with obviousness on the whole if more emphasis be laid on the concrete suggestions instead of the subject matter as a whole. The U.S. Supreme Court ruled in the case of KSR that CAFC’s stiffness in applying the TSM test caused the four mistakes, among which the second lay in that it held that a person skilled in the art could only get the teachings from the elements of the same technical problems from the existing technology.

 

Both China and U.S. stress the avoidance of adverse effect from hindsight in determining non-obviousness. As early as in 1911, the U.S. Supreme Court criticized such adverse effect in the case of Diamond Rubber. Judge Frankfurter opinioned in the case of the wireless telegraph inventor Marconi that, by way of hindsight, it was naturally to believe any invention would be obvious to the public even if the invention was very inventive prior to its publication. However, this happened from time to time. Therefore, many American precedents stress the focus on the secondary considerations, the determination of objective technical problems, and other methods.

 

China has proper provision on such hindsight in its Guidelines as following:

When evaluating the non-obviousness of an invention, the examiner is apt to underestimate the non-obviousness of the invention since he has already known the contents of the invention, and hence a mistake of ex post facto analysis is likely to be made. Therefore, the examiner shall always bear in mind that, in order to reduce and avoid the influence of subjectivity evaluation shall be presumed to be made by a person skilled in the art on the basis of comparison between the invention and the prior art before the filing date thereof.

 

The U.S. has a long history of patent system and developed many noteworthy rules and experiences in determining non-obviousness. For example, China may learn from its focus on the secondary considerations in concrete non-obviousness analysis, and its centralization and homogenization of entities for non-obviousness determination in order to promote objectivity.

 

It is generally believed that the U.S. Supreme Court introduced the elements of secondary considerations of the method of obvious or non-obvious sign in the Goodyear Dental case in 1876. These secondary considerations include long felt but unsolved technological problems, others’ failure and imitation in this regard, commercial success, etc. Judge Hand persisted that the patentability should be determined by these factors or the signs of non-obviousness. The U.S. Supreme Court officially recognized his opinions in the case of Graham in 1966 that these factors or signs may be employed as secondary considerations to determine non-obviousness under Section 103.

 

An important way to promote the objectivity of the obviousness inquiry is to pay attention to the secondary considerations because secondary determination will usually help the determiner to get access to more complete information. As Judge Hand described: “in recognition of the contribution by an inventor to the technological advances, as we often say, the most reliable standard is to consider the background before and after the invention; whenever possible, the court should make every effort to assess the creativity of the invention through its understanding of the background of the leading and successful invention.”

There have been few judgments directly rendered by China’s courts according to the secondary considerations because China paid less attention to these considerations in determination process. Therefore, it is rare to see judgments in terms of non-obviousness resulting from commercial success in China. China may draw more lessons from American cases in order to promote the objectivity of obviousness inquiry in this regard. Of course, the parties should pay more attention to the evidence in this respect.

 

It can be seen from the empirical analysis of China’s administrative cases of patent that the differences of obviousness determination mainly come from different determiner and it can also be seen from the gap between the judgment amendment rendered by IP divisions and administrative divisions in China’s courts in recent years.

 

The U.S. experience shows that the centralization of the determiner is conducive to the objectivity of the obviousness inquiry. The U.S. had had relatively general rules for the determination process before the establishment of CAFC because CCPA had played an important role in the trial of patent prosecution cases. However, other Courts of Appeals for the Federal Circuit has established more rules for the obviousness inquiry, through its decisions on defenses against the claim of invalidity of patent, and in its trial of case involving patent infringement. Different courts of appeals led to different rules. Judge Rich commented that “inventions or the non-obviousness of patent is a beautiful uncertainty under laws, whereas how the legal professional to make a living is in fact a secret.” However, the establishment of CAFC ended such chaos. The author thinks that the most important reason for such change is that all cases of patent appeals were brought to CAFC with Judge Rich as its head. In other words, the homogenization of entities leads to the unification of obviousness determination in America.

 

It can be safe to say from this perspective that all the administrative cases of patent be brought to either the administrative panel or IP panel may lead to the objectivity of obviousness determination in China because of homogenization of judicial entities. Therefore, it can be expected that there will be a march toward a more stable and unified objectivity in the process since the IP panel has been the sole place for the trial of administrative cases of patent in 2009.

 

IV. Summary

Although China is different from the U.S. in patent law and judicial system, they have more similarities in essence that on the surface in terms of judicial practice in the end. Therefore, the same invention will enjoy the same protection in two countries. Furthermore, the U.S. has accumulated rich experiences and detailed rules in its history of patent development, and some of them are worth learning for reference. China’s examiners and judges should strengthen exchanges with their U.S. counterparts from the U. S. in this regard.