Supreme Court Rules: Identifying A Technical Problem Itself May Establish Patent Inventiveness

The Supreme People's Court has issued a final judgment in an administrative dispute over the invalidation proceedings against a utility model patent. The Court held that the dispute patent identified a technical problem that would not have been easily discovered by those skilled in the art, and proposed a solution to that problem. Even though the solution employed conventional technical means, the very act of identifying the problem was sufficient to establish the patent's inventiveness. The Court therefore upheld the validity of the patent.

This case involves a dispute over the validity of a utility model patent. Company A is the patentee. Company B filed an invalidation request against the patent, but the CNIPA issued a decision maintaining the validity of patent.

Company B challenged the decision and file a lawsuit. The first instance court found that CNIPA’s conclusion that “the patent's contribution lay in identifying a certain technical problem” is not well founded because that technical problem would have been readily discoverable by those skilled in the field based on the technical knowledge they possessed. The court therefore overturned the administrative decision. Company A appealed.

The Supreme People's Court, in its second instance ruling, identified: the dispute in this case centers on how to define the technical problem that the patent seeks to solve, and what impact that definition has on the assessment of inventiveness. In other words, the key questions are whether the technical problem addressed by the patent would have been easily discoverable, and whether that discovery alone is sufficient to establish the patent's inventiveness.

On this central question, the Court pointed out: The patent and the closest prior art share the same overall technical concept. Both use a disconnection detection circuit to identify whether a pipeline system has become disconnected. The difference, however, is that the patent adds an additional feature: it also detects whether the detection circuit itself has short circuited. All parties agreed that the technical means used to achieve this additional feature were matters of common general knowledge in the field.

However, the evidence on file did not show that, before the patent application was filed, those skilled in the art would have recognized that a broken detection circuit does not necessarily mean the pipeline system itself is broken.

The patent, however, identified this easily overlooked problem. It further pointed out that the cause of the circuit break matters because different causes call for different levels of urgency in vehicle maintenance. Based on this discovery, the patent proposed a technical solution that distinguishes between a short to ground and an actual pipeline system failure.

Lastly, the Court further found that the evidence on file did not demonstrate that, before the patent application, those skilled in the art had already recognized the technical problem that the patent sought to solve, let alone proposed a solution identical or substantially similar to the patented solution. Therefore, the technical problem was not obvious to those skilled in the art. Although the technical means used to solve the problem were conventional, the patent's contribution lay in identifying the problem itself and providing a solution to it. That contribution was sufficient to establish inventiveness.

This ruling clarifies an important principle. If the main technical contribution of an invention lies in identifying a problem that would not have been easily discovered by those skilled in the art, and in providing a solution to that problem, then the inventiveness of the invention should not be denied merely because the technical means employed to solve the problem are conventional. The case addresses a key challenge in improving upon existing technologies and enriches the body of rules governing inventiveness assessments. It encourages innovators to focus on identifying genuine problems and pursuing genuine innovation, and reflects a judicial philosophy that respects the process of research and development while promoting technological progress.

 (2024) Zui Gao Fa Zhi Xing Zhong No. 688

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