Chinese inventiveness criteria and their impacts on industry : inspiration from bio-patents

Abstract

Nowadays, patent is important in the business world. Among all the criteria for granting a patent right or upholding a valid patent, inventiveness is usually the final one to be considered. The currently available literatures on inventiveness in China focus primarily on theoretical discussion, rather than on practical aspects, of the inventiveness criterion. This research is undertaken to fill this research gap, that is, to investigate how inventiveness criterion in Chinese patent law is being created, assessed and applied in practice, and how such practice influences innovation on high technology industries, such as biotechnology.

Taking biotechnology as an example, the present research tries to discover the inventiveness criterion in Chinese legal practices and investigate its impacts on the industries. The reason for taking biotechnology as an example is because the biotechnology is a relatively new legal area which comprises new legal issues and has the uncertainty involved. Discussions on biotechnology inventiveness criterion both comprise common issues among all the technical fields and special issues which are unique to the biotechnology.

This research explores the governing rules and human-factor involved in setting and applying inventiveness criteria in China and also reviews a significant number of government decisions and court judgments rendered up to 2012 concerning inventiveness of biotechnology inventions. Based on the analyses of these cases and judgments, this research attempts to find the legal practices that are dominant in making the assessment of inventiveness of the particular inventions. This research concludes with the evaluation on the impact of such practices on the innovation and development of biotechnology in China.

In particular, this research finds that the China Patent Reexamination Board (“PRB”) revoked approximately half of the decisions made by the China State Intellectual Property Office (“SIPO”)’s substantive examination department. In addition, the courts which have jurisdictions to hear the appealed PRB decisions upheld almost every PRB decisions. This statistic shows that the PRB is the key organ that dominates the decision-making and has a superior authority in concluding whether an invention has inventiveness in Chinese patent practices. This research further discovered that the decision makers, including the examiners of the SIPO and the PRB as well as the court judges, have a broad discretion in deciding whether an invention has inventiveness by adopting a practical approach towards governmental rules. Finally, this research proposes some practical strategies for the industries as to what are the best business practices to ensure a patent to be upheld or invalidated based on China’s special practices of assessing inventiveness. These strategies could be useful help the industries to prepare their patent applications and to defend their patent rights. A clearer understanding of the inventiveness criterion and its assessment practices in China can also help the patent rule and policy makers in designing the inventiveness criterion that is conducive to promoting industry development in the future.