Comparison And Research On Assessment Of Inventive Step Of Patent

Trough the empirical analysis of patent administrative cases in our country, we find that assessing inventive step is the most prominent focus and difficulty problem, but the systematic theory and practice research on this subject matter is little. This dissertation focuses on the practical problems of assessing inventive step in our country, by comparison with the United States and the European patent system to find solutions. This dissertation includes two parts, the first four chapters collectively referred to as the theoretical part focused on the basic theoretical issues about assessing inventive step, the fifth to the eighth chapter referred to as practical part, discuss mainly the practical issues including concepts, procedures and methods. The main research methods are comparative study, historical analysis, case analysis and law and economics analysis.For a long time, nonobviousness as a requirement of patent is only the case law in U.S. juridical practice. The definition has gone through the "invention",“inventive genius”test,“flash of creative genius”test,“nonobviousness”, case law showed confusion and uncertainty. A unified standard of "nonobviousness" was affirmed after the establishment of U.S. Court of Appeals for the Federal Circuit and enactment of the Patent Act of 1952, 35 U.S.C.§103,then the rule developed by Graham v. John Deere Co. and KSR International Co. v. Teleflex Inc.. The coordination of substantive rules of patent law in European Union and other international cooperation promoted the unity of the system of inventive step. Comparative study and empirical analysis show that "notable progress" is not necessary in our country. Comparative study also shows lots of legal transplantation of“inventive”were made in both theoretical level and practice level.Developments in U.S. over the last years have shown that objectivity in determining inventive step is the biggest challenge. Hindsight and judges’decentralization are root causes of rampant subjectivity when determining nonobviousness. Specific rule constraints and the homogenization of judges is the most effective way to promote the objectivity in determining nonobviousness, because the objectivity is determined by the personality,experience and technical knowledge of judges.Economic analysis shows that the optimal size of inventive step lies in the position where marginal social costs equal to marginal social benefits, but economic analysis can not provide operational tools because the quantification of the size of inventive step is complicated. Economic analysis also showed that the practices in other countries to assess inventive step comply with economic rationality. The criterion of nonobviousness in U.S. is sometimes rigid and sometimes relaxed, and keeps changing in different stages of development. In response to criticism of the relaxation of the nonobviousness requirement, the Supreme Court of the United States upgraded the criteria of inventive step in KSR. In practice, the size of inventive step depends on qualitative analysis rather than quantitative analysis, so the size of inventive step between invention and utility model is difficult to distinguish in practice. Three principles have to be met when assess“inventive”. The rules to assess inventive step should coordinate with the rules to relief the patent right, it is called“principle of coordination”. The“principle of overall evaluation”is embodied that the assessing of inventive step should base on the overall evaluation all technical features of the claimed invention. The“principle of comprehensive evaluation”requires viewing the technical problems, technical solutions and technical effects as a whole.It’s a question of law rather than a question of fact to assess inventive step. In administrative practice, The Patent Reexamination Board should strictly follow the principle of fair, including the principle of hearing and the principle of reexamination upon request. In judicial practice, courts can only review the legality of the specific administrative practice, but can not beyond the jurisdiction of the Patent Reexamination Board, directly declare the patent invalid is also forbidden, what can be done is to examine the substance of patent. The burden and standard of proof should be different between the reexamination procedure cases and the invalidation procedure cases.China can learn from foreign countries to make a clear definition of common general knowledge. The common general knowledge means technologies generally known to a person skilled in the art or matters clear from empirical rules. Technologies generally known to a person skilled in the art includes well-known or commonly used art. The literature which records the prior art is called reference in assessing inventive step, the most similar prior art is the starting point to determine the“inventive”. There are three steps, first is to interpret the subject matter of the prior art and claimed invention, after that, the differences between technical features shall be identified, and then determining whether there are technical teachings.The invention by selection is divided into invention by parameter selection and invention by species selection. In the United States, the history of determining nonobviousness went through different stages in which the requirement of synergism effect was proposed, supported, opposed, and supported again. The Supreme Court of the United States in KSR ultimately supported the requirement of synergism effect. Synergism effect is just the requirement of combination of invention; the assessing inventive step of combination of invention shall depends on the basic principles of assessing inventive step.The secondary considerations include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. In the United States, secondary considerations shall be considered as necessary factual requires in determining nonobviousness, they are included in Graham’s factual requires. But in the Europe Union, the secondary considerations are only of importance in cases of doubt. The difference is little between the United States and the Europe Union in practice. In all countries, it is emphasized to make sure that there is relationship between secondary considerations and technical features.Research results in this dissertation imply that the practices are strikingly similar in the assessment of inventive step in every country regardless of how different between patent systems, and these practices basically in line with economic rationality. This dissertation presents a number of recommendations aimed to promote the objectivity, stability and unity in assessment of inventive step.