The Pine vs. The Cypress: Distinguishing The "Substantive Features" Used For Determining Inventorship And Patent Inventiveness — An Evolution Of Judicial Practice Through Two Interpretations Of "Substantive Features"

Introduction: From Indistinguishable to Clearly Distinct

In the botanical world, while pine and cypress trees are both evergreen conifers, they possess unique characteristics in form, color, and spirit. A layperson might group them under the general term "conifers," but to a botanist, they are clearly distinct. This situation of being "seemingly identical, yet fundamentally different" aptly mirrors a long-standing point of confusion in Chinese patent law practice: Are the "substantive features" used to determine inventorship and the "substantive features" used to assess the inventiveness of an invention one and the same concept, or are they two distinct legal standards?

This question is not mere semantics. It directly impacts the protection of an inventor's right to be named, the adjudication of patent ownership disputes, and even the foundational R&D incentive mechanisms within companies. To conflate the two could lead to an absurd conclusion: that the inventorship of an invention could change with the status of its patent grant or even be retroactively nullified through invalidation proceedings. This not only disrespects creative labor but also poses a significant challenge to the stability and certainty of intellectual property rights.

Fortunately, just as we eventually learn to distinguish a pine from a cypress, China's judicial practice, particularly a recent landmark ruling by the Supreme People's Court (SPC), has provided a clear answer with profound insight. This article aims to deeply analyze the different connotations of "substantive features" in these two contexts. By tracing the evolution of judicial practice and focusing on key cases, we will clarify the fundamental standard for determining inventorship, offering clear legal guidance for both enterprises and inventors.

I. The "Two Faces" of the Law: The Root of the Confusion

The origin of this problem lies in the dual appearance of the term "substantive features" (实质性特点) within China's patent law framework.

First, in the determination of inventorship, Rule 14 of the Implementing Regulations of the Patent Law states: "An inventor or designer... refers to any person who has made creative contributions to the substantive features of an invention-creation. Any person who, in the course of completing the invention-creation, is responsible only for organizational work, for facilitating the use of material and technical means, or for other auxiliary work shall not be an inventor or designer."

The legislative intent here is to emphasize that an inventor must be a contributor to the core technical content—a true "intellectual laborer." It focuses on who contributed the key, creative ideas during the process of an invention's creation from conception to realization. The "substantive features" here point to the technical essence of the invention itself.

Second, in the assessment of inventiveness, Article 22, Paragraph 3 of the Patent Law stipulates: "Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents notable progress..."

Here, "substantive features" are further interpreted in the Patent Examination Guidelines as "non-obviousness."¹ This requires comparing the invention as a whole technical solution against the prior art existing before the filing date to determine if it would have been obvious to a person skilled in the relevant technical field. This is a relative concept, and its conclusion is heavily dependent on the chosen prior art references.

The same terminology is thus applied in two completely different legal scenarios: one concerning "who is the contributor" (inventorship) and the other concerning "how advanced is the technology" (patent inventiveness). This legislative overlap created the ambiguity that has led to confusion in practice and caused early judicial explorations to go astray.

II. Early Judicial Fog: Conflating Patent Validity with Inventorship

In the early stages of judicial practice, some courts failed to clearly distinguish between these two types of "substantive features," tending to treat them as equivalent. The underlying logic was that since a patent possesses inventiveness for its "substantive features" relative to the prior art, only the person who contributed to these features can be the inventor. While this view appears logically consistent, it conceals significant risks.

A classic example is the case of a Guangdong-based Equipment Company, et al. v. Yu over the infringement of the right to be named as an inventor ³. In this case, both the first and second-instance courts held the view that the "substantive features" for determining inventorship and for assessing inventiveness were synonymous. However, a dramatic turn occurred during the appeal: the patent in question was invalidated by the China National Intellectual Property Administration (CNIPA).⁴

The Guangdong High People's Court ultimately dismissed Yu's claim based on this new fact, reasoning that the "legal basis" for his claim to inventorship had been lost. This ruling effectively "hard-linked" the inventor's right to be named with the legal validity of the patent.

The drawbacks of this approach are self-evident:

1. It denies the objective existence of an invention: A technical solution exists as an intellectual achievement from the moment its concept is completed and recorded, whether on paper or through experimentation. It has its inventors from that point. Whether it is later filed as a patent, granted, or maintained has no bearing on its creation or the creative labor invested by its inventors.
2. It undermines the foundation of inventors' rights: The right to be named is a personal right granted by the Patent Law, stemming from the fact of their creative contribution. It should be stable and definite. If this right can become uncertain due to changes in prior art references during examination or invalidation, it is a grave injustice to the inventor.
3. It ignores the dynamic nature of patent claims: During prosecution, applicants often amend claims to secure a grant, for instance, by narrowing the scope of protection. If inventorship were determined solely based on the final, inventive features of the granted claims, the contributions of those who conceived the original, broader, and equally important inventive concept would be completely overlooked.

This judicial perspective, which failed to distinguish the "pine" from the "cypress," though present in a specific historical period, contained inherent irrationalities that foreshadowed an inevitable evolution in legal philosophy.

III. Clearing the Fog: The SPC's Ruling in Guo v. A Suzhou-based Pharmaceutical Company

As technological innovation has become central to market competition, disputes related to inventorship have grown in number and complexity. Finally, the case of Guo v. A Suzhou-based Pharmaceutical Company⁶ provided the Supreme People's Court with a pivotal opportunity to clarify this fundamental issue. The SPC's judgment serves as a definitive correction of the dual meaning of "substantive features."

1. The Core Dispute:

The case centered on Mr. Guo etc., who proposed the

core inventive concept of using the drug "proxalutamide" to treat COVID-19 and conducted preliminary research. Subsequently, the pharmaceutical company built upon this foundation and discovered that proxalutamide was also effective against variants of the coronavirus. During patent prosecution, to overcome an examiner's objection based on a lack of inventiveness, the company limited the scope of protection to "the use for treating COVID-19 variants" and was granted a patent on that basis. The company then argued that Guo had not contributed to the final, inventive technical solution and thus should not be named as an inventor.⁷

2. The Supreme People's Court's Clear Distinction:

The SPC delivered a conclusive ruling, stating unequivocally:

"The 'substantive features' in the assessment of inventiveness cannot be automatically equated with the 'substantive features' in the determination of inventorship... The identification of an inventor does not have a necessary causal relationship with whether the patented technical solution itself possesses inventiveness."

The court's reasoning was logical and multi-layered:

• The Core Standard is the "Inventive Concept": The court emphasized that "the discovery of a technical problem and the conception of an invention-creation are often the starting point of an invention." In this case, the inventive concept proposed by Guo—"using proxalutamide as an AR pathway inhibitor to treat COVID-19"—was the "starting point and the key" to the entire R&D effort. This concept was original and laid the groundwork for all subsequent work.
• Contribution Must Be Assessed Across the Entire Inventive Process: The court held that determining inventorship requires examining contributions to the entire process of forming the technical solution, not merely focusing on the "distinguishing features" between the finally granted claims and the prior art. The patented technical solution encompassed both the foundational inventive concept from Guo (treating COVID-19) and the company's subsequent improvement (treating variants). The foundational contribution cannot be negated simply because it lacked "prominent substantive features" when compared to the prior art.
• Distinguishing "Contribution to the Technical Solution" from "Contribution to the Distinguishing Features": The SPC astutely pointed out that making a creative contribution to the "substantive features" of an invention should be understood as "making a substantive contribution to the technical solution itself," not narrowly as "making a substantive contribution to the distinguishing technical features of the patented solution over the prior art."⁸ Guo's contribution was precisely a substantive contribution to the entire "drug repurposing" technical solution.
• Shifting the Evidentiary Focus to an Earlier Stage: When determining inventorship, the consideration of evidence should not be confined to the patent prosecution file but should be "shifted earlier" to the invention's formative stage. Evidence such as WeChat records, research proposals, and jointly published articles, which can prove the conception and development of the inventive idea, must be fully considered.

Through this case, the SPC clearly distinguished the two types of "substantive features":

• "Substantive Features" for Inventorship: This is an intrinsic, absolute standard referring to the core "inventive concept" of the invention. It is the soul of the invention and the benchmark for judging who made the critical intellectual contribution to its creation.
• "Substantive Features" for Inventiveness: This is an extrinsic, relative standard referring to the "non-obviousness" of the technical solution when compared to the prior art. It is an evaluative criterion used to measure the technological level of the invention and to determine if it merits the monopolistic protection of a patent right.

One is the "pine," the other the "cypress." The two have finally been clearly distinguished.

IV. Implications of the New Rule: Practical Guidance for Companies and Inventors

This SPC ruling not only resolves a difficult issue of legal application but also has profound implications for R&D management in companies and the protection of inventors' rights.

1. Guidance for Companies:

• Improve R&D Record-Keeping and Contribution Assessment Systems: Companies should establish standardized R&D processes that meticulously document every stage, from project initiation and problem identification to initial concepts, solution screening, and experimental validation. The focus should be on recording the originators and developers of the "inventive concept," rather than simply naming project leaders or final experimenters as inventors.
• Respect and Incentivize "Contributors of Ideas": Incentive mechanisms should extend to early contributors who propose key "inventive concepts," even if these ideas are later refined or implemented by others. This encourages foundational innovation and "0-to-1" breakthroughs.
• Handle Inventor Designation with Care: When filing a patent application, the list of inventors should be determined comprehensively and fairly based on objective records of the entire R&D process. This helps avoid subsequent disputes over inventorship and ownership, which can create legal risks for the company.

2. Guidance for Inventors:

• Preserve Evidence of Original Contributions: Whether proposing a new technical problem or forming a preliminary solution (the inventive concept), inventors should consciously preserve relevant evidence, such as lab notebooks, emails, meeting minutes, and chat logs. This is crucial for proving one's "creative contribution."
• Understand the Core Value of an "Inventive Concept": A strong "inventive concept" holds immense value in itself. Even if one cannot complete all subsequent experiments and development, proving that the concept was the starting point and key to the successful R&D effort can secure one's status as an inventor.
• Clarify Roles and Contributions in Collaborative R&D: In team-based or external collaborations, roles, tasks, and expected contributions should be communicated at the project's outset and clearly documented throughout the process to prevent disagreements over inventorship after the results are achieved.

V. Further Considerations: The Creative Spark vs. the General Requirement—Should the Proposer of a Technical Problem Qualify as an Inventor?

The judgment in the Guo case establishes that the "discovery of the technical problem and the conception of the invention" as the starting point of an invention. This, however, introduces a more profound inquiry: should the individual who initially "proposes the problem" be granted a place in the list of inventors? After all, every significant solution originates from an identified problem.

The answer is not absolute; a crucial distinction must be made between proposing a creative insight and merely expressing a generalized need.

• The Proponent of a Need: This role is analogous to that of a client. They might state, "I require a more rapid mode of transport" or "I need a pharmaceutical to treat Disease X." Such a need is often public knowledge and general in nature. It indicates a desired outcome but provides no technical pathway toward a solution. This does not constitute creative labor and, on its own, is insufficient to confer inventor status.
• The Contributor of Insight: This category of contributor is fundamentally different. They not only identify the problem but also provide the critical, creative spark that informs how it might be solved. For example, instead of stating a need for a "new drug," they might propose, "Could the A-pathway be leveraged to inhibit the replication of Virus X?"—as was the situation in the Guo case. This disclosure of or inspiration for a technical pathway directly gives rise to the subsequent "inventive concept" and is an indispensable component of the invention's substantive features.

This distinction is particularly critical in the context of commissioned and collaborative research and development. Consider the following scenario:

• Company A (the commissioning party) directs Company B (the development party): "The market requires an air conditioner compressor with 50% lower energy consumption. We task you with its development."
• Following extensive research and development, Company B invents a novel magnetic levitation compression technology and successfully obtains a patent. Can Company A, by virtue of having "proposed the problem," assert co-inventorship and thereby claim a share in the patent rights?

In accordance with the legal principles articulated by the Supreme People's Court, the answer is no. Company A's proposal for a "50% reduction in energy consumption" represents a commercial or technical objective—a "need" rather than a creative "insight." It offered no pivotal technical guidance on how Company B was to achieve this objective. The genuine creative contribution resides in Company B's conception and implementation of the specific "inventive concept" of "magnetic levitation compression technology."

Therefore, in determining whether the proposer of a technical problem qualifies as an inventor, it is imperative to scrutinize the fundamental nature of the contribution: Did the individual merely identify the destination (the need), or did they also illuminate the initial path forward (the insight)? Only the latter is worthy of the title "inventor."

Conclusion: Returning to the Source and Respecting Creation

The right to be named as an inventor is, in essence, the recognition and respect for the creative intellectual labor that goes into completing a technical achievement. It is a matter of fact—"who is the true creator"—and is not necessarily tied to whether that achievement meets the statutory standards for a patent grant or achieves commercial success.

Through its judgment in the Guo case, the Supreme People's Court has decisively severed the improper link between inventorship and patent validity. It has returned the determination of inventorship to the fundamental standard of "who made a creative contribution to the inventive concept." This marks a significant leap forward in the philosophy of China's patent judicial practice.

Henceforth, we can say: the "substantive features" for determining inventorship are the pine, rooted in the intrinsic fabric of the invention itself; the "substantive features" for assessing inventiveness are the cypress, standing tall in comparison to the prior art. The pine and the cypress are different, each with its own place. Only by clarifying this distinction can we truly incentivize innovation, protect rights, and allow the forest of intellectual property to flourish.

Footnotes:

1 The Patent Examination Guidelines (2023), Part II, Chapter 4, Section 2.2, further defines the substantive features required for an invention to be inventive as follows: "An invention has prominent substantive features' means that, for a person skilled in the relevant technical field, the invention is non-obvious relative to the prior art. If the invention could have been obtained by a person skilled in the technical field through mere logical analysis, reasoning, or limited experimentation based on the prior art, then the invention is obvious and thus does not possess prominent substantive features."

2 The Patent Law requires that inventions possess "prominent substantive features," utility models possess "substantive features," and industrial designs have "obvious differences" compared to the prior art or a combination of features of the prior art. These are all conditions for granting a patent. For the sake of simplicity, this article uses "substantive features" as a collective term to refer to the "prominent substantive features," "substantive features," and "obvious differences" that guide the inventiveness requirement for these three types of patents.

3 (2014) Yue Gao Fa Min San Zhong Zi No. 33, hereinafter referred to as the "Yu case."

4 The court of first instance ruled that Yu was the inventor. However, the losing party, the Guangdong-based Equipment Company successfully had its own patent declared invalid by the China National Intellectual Property Administration.

5 Article 16 of the Patent Law, which states, "The inventor or designer has the right to be named as such in the patent documents," grants inventors and designers the right of attribution.

6 The first instance was (2022) Su 05 Min Chu No. 925, and the second instance was (2023) SPC IP FINAL No. 2911, hereinafter referred to as the "Guo case."

7 For ease of understanding, the dynamic changes of the claims during the examination process are simplified and rephrased as follows:

Original Claims:

Claim 1: The use of the drug proxalutamide in treating COVID-19 and its variants.

Claim 2 (Dependent): Omitted.

Claim 3 (Dependent): Omitted.

Claim 4 (Dependent): The use of the drug proxalutamide in treating variants of the COVID-19 virus.

Claim 5 (Dependent): The use of the drug proxalutamide in treating COVID-19 and its variants.

Granted Claim:

Claim 1 + Claim 4 + Claim 5: The use of the drug proxalutamide in treating variants of the COVID-19 virus.

8 This rule is inferred from the following commentary by the Supreme People's Court in the Guo case:

"In patent granting and confirmation administrative procedures, the findings made by an examiner or examiners when evaluating the novelty and inventiveness of a specific claim are based on specific prior art. While these can be important reference factors in determining inventorship, they cannot be the sole basis for negating the substantive contribution made by a specific inventor to the patented technical solution. Full consideration must be given to the evidence on record related to the formation of the invention to make a comprehensive finding of fact. Generally speaking, a person who has made a substantive contribution to the inventiveness of the patented technical solution is, of course, an inventor. However, it cannot be said that inventors are limited only to those who made a substantive contribution to the technical features that distinguish the patented technical solution from the reference documents."

9 Although the law stipulates a comparison against the prior art as a whole, the prior art is often represented by specific reference documents, which can change dynamically during the examination or invalidation process.

10 The commentary from the Supreme People's Court in the Guo case states: "The discovery of the technical problem and the conception of the invention are often the starting point of an invention or creation. They reflect the inventor's innovative thinking and choices in seeing through phenomena to grasp the essence during the process of discovering and solving a problem, which likewise requires arduous effort and creative labor." Guo and others were established as inventors not because they simply pointed out the well-known technical problem of "needing a drug to treat COVID-19," but because their "inventive concept"—namely, the idea of using proxalutamide as an AR pathway inhibitor to treat COVID-19 ("repurposing an old drug")—helped establish their status as inventors.

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