In a recent administrative appeal ruling, the Supreme People's Court clarified that when assessing inventiveness, all technical features and their coordination relationship must be considered as a whole, rather than comparing each individual feature in isolation with the prior art. A fragmented approach may unjustifiably undervalue the inventiveness of a patent.
This case concerns a review of an invalidation decision, the facts of which are briefly summarized as follows.
Company A was the patentee of an invention patent relating to a hemostatic clip. Company B filed a request with the China National Intellectual Property Administration (CNIPA) to invalidate the patent in its entirety and submitted three pieces of prior art evidence (Evidence 1 – Evidence 3) in support of its request.
The CNIPA issued an invalidation decision, finding Company A's patent valid. The decision concluded that compared with the Evidence 1, claim 1 of the patent possessed the following three distinguishing technical features: 1) a bending structure that held the clamping arms in a locked and closed position, 2) a detachable connection mechanism, and 3) a stabilizing structure that secured the closed lock position. Based on these distinguishing features, the actual technical problem solved by claim 1 was how to allow convenient detachment of the hemostatic clip while ensuring its stability in the locked state. Evidence 1 did not disclose these features, nor did Evidence 2-3 provide any corresponding teaching. Claim 1 was therefore found to possess inventiveness.
Company B challenged the invalidation decision before the court of first instance. The court held that the distinguishing feature 1) had already been disclosed by Evidence 1. In its view, the function of the bending structure in the patent is to increase clamping force to keep the clamping arms in a locked and closed position, and the corresponding structure in Evidence 1 had the same function. The court further found that the distinguishing features 2) and 3) had been disclosed in Evidence 3. Consequently, the court annulled the CNIPA decision and ordered a new examination.
Both Company A and the CNIPA appealed. The Supreme People's Court ruled to revoke the first instance judgment and dismissed Company B's litigation claims.
The Supreme People's Court held as follows.
1. Regarding the distinguishing features and the actual technical problem to be solved, the invalidation decision had identified three distinguishing features. The first instance judgment concluded that feature 1) had been disclosed in Evidence 1. The Supreme People's Court disagreed. Based on the patent specification and the general operating principle of hemostatic clips, the bending structure in claim 1 of the patent was intended not merely to position the clamping arms but to place them in a locked and closed state. Without such a lock, the dual safety lock effect described in the patent could not be achieved. By contrast, the corresponding structure in Evidence 1 is different in terms of its arrangement position, the function it performs, and the effect it achieves. . It was designed to provide greater clamping force, not to lock the arms in a closed position. The prior art device, a biopsy forceps, required the arms to open flexibly to release a tissue sample and therefore had no need for a locking feature. Hence, the first distinguishing feature was not disclosed in Evidence 1. The CNIPA's finding on this point was correct, and the first instance court’s ruling had erred in the determination as to the disclosure .
Based on the above distinguishing features, the technical problem actually solved by claim 1 includes not only to making the hemostatic clip convenient to detach while ensuring stability in a locked state, but also how to convert a biopsy forceps into a hemostatic clip.
2. Regarding the question of technical teaching, the first instance court had found a teaching to combine Evidence 1 and 3 and concluded that the second and third distinguishing features were disclosed in Evidence 3. The Supreme People's Court held otherwise. First, since the first distinguishing feature had not been disclosed in Evidence 1 or 3, and no other evidence indicated that the prior art provides any technical teaching for adopting this structure, claim 1posesses inventiveness regardless of whether the other features were disclosed in Evidence 3.
Second, even if the combination of Evidence 1 and 3 were considered, the resulting technical solution would achieve only a single safety lock through a different mechanism. The prior art provided no teaching to simultaneously adopt both a bending structure and a hook structure to achieve a dual safety lock.
Finally, the various structures in the claimed invention work together at corresponding positions to achieve the dual safety lock effect, and these structures are interrelated in terms of their positions. In assessing inventiveness, all these technical features and their coordination relationship must be considered as a whole. Isolating each feature and comparing it individually with the prior art would risk underestimating the inventiveness improperly and falling into the trap of hindsight reasoning.
This ruling further clarifies the application of the “holistic assessment principle” in inventiveness judgement. For technical features that are interconnected in structure and positionally interrelated, the reviewing body must examine their synergistic effect and overall technical contribution. Fragmented evaluation that reconstructs the invention after the fact must be avoided. This rule provides important guidance for achieving uniformity in patent administrative and invalidation proceedings and in infringement trials, for accurately assessing the true contribution of an invention, and for encouraging genuine technological innovation.
(2023)Zui Gao Fa Zhi Xing Zhong No. 801
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