Case Introduction

The patent involved in the case is ‘a pump dispenser with inclined jet nozzle’, with the filing date of October 25, 2012 and priority date of October 25, 2011, which is applied by company A. After substantive examination, the original examination department of CNIPA made a rejection decision on the grounds that the application did not involve inventive step regulated in Article 22, Paragraph 3 of the Patent Law. Company A refused to accept the rejection decision and requested for reexamination to CNIPA, who later made a decision for being sued and withheld the rejection decision.

Company A refused to accept the sued decision and filed a lawsuit to Beijing Intellectual Property Court with the following main reasons: the technical problems to be solved, technical effect and the purpose of document 1 all keep away from that of claim 1, and there are multiple distinguishing features between the both, therefore, document 1 is not applicable as the closest prior art. In view of the above, company A requests to the court for revoking the sued decision and demand the defendant to make a new decision. The Beijing Intellectual Property Court entered a judgment on May 26, 2021.

Judge’s Law Interpretation

In practice, there are various ways to create an invention-creation starting from different prior art, each of which is differentially difficult for those skilled in the art. In order to ensure the invention which has inventive-step compared with all prior art be authorized, the Guidelines for Patent Examination emphasized that of numerous prior art, ‘the closest’ prior art, that is, ‘a technical solution of all the prior art that is most closely related to the invention claiming for protection’ should be the judgment starting point of non-obviousness. Furthermore, only the technical solutions still with inventive-step when comparing with the closest prior art are the technically contributive invention-creations to the whole of prior art.         

Therefore, if a technical solution involves inventive-step with respect to one prior art and does not involve it relative to another one, then the latter is more suitable than the former for being as the ‘closest prior art’ to evaluate the inventive-step of the technical solution.

The Guidelines for Patent Examination gives schematic examples about how to determine the closest prior art, ‘For example, it may be the prior art sharing the same technical filed, the closest technical problem to be solved, technical effect or purpose with the claimed invention, and (or) the one with the most technical features of invention disclosed, or the one that is enable to realize the functions of invention with the most technical features of invention disclosed in spite of different from the technical field of the claimed invention’. The prior art meeting the above requirements is usually the closest prior art to the claimed invention, accordingly, the Guidelines for Patent Examination provides guidance for examiners and invalidation claimers, but it does not mean the closest prior art must satisfy the conditions mentioned above.

For this case, the plaintiff held that the reference document 1 should not be regarded as the closest prior art in order to prove that the present application involve inventive-step. However, based on the aforementioned reasons, as long as the present application has no inventive step can be concluded with the ‘three-step method’ can be fully applicable for reference document 1 as the starting point for the judgment, then the sued decision’s  conclusion on determining the inventive-step is correct. As for whether the reference document 1 of all prior art is the one ‘most closely related’ to claim 1 of the application is not the focus of judging inventive-step, furthermore, it is not enough to overturn the conclusion of sued decision. Therefore, the relevant claims of the plaintiff cannot be established, and this court does not support it.

From Beijing Intellectual Property Court

March 10th, 2022