Advances in Patent Examination Practices: Insights from Recent Cases on Prior Art, Novelty, and Inventiveness

The ongoing process of patent examination involves intricate assessments of prior art disclosures, novelty, and inventive steps. As the landscape of technical innovation continues to evolve, so too must the methods of examination to ensure the integrity and fairness of patent grants. Recently, the Re-examination and Invalidation Division of the Patent Office of the National Intellectual Property Administration has curated a series of landmark cases that reflect current practices and emerging trends across diverse technical fields. This article summarizes these cases to provide a clear overview of the latest standards and considerations exercised in the examination process.

A. Prior Art and Existing Designs 

1. Publication Disclosure: 

Determination of Whether Pharmaceutical Standards Constitute Prior Art Disclosure 

Case No.: 4W116478 — A Traditional Chinese Medicinal Composition for Treating Femoral Head Necrosis and Its Preparation Method 

Quality standards for registered pharmaceuticals that are archived at specialized institutions, such as the Drug Administration or Pharmaceutical Inspection Institutes, are generally accessible only to authorized personnel. As a result, such archiving typically does not qualify as a disclosure under the patent law.

Determination of the Disclosure Date for Medicinal Product Information Leaflets 

Case No.: 4W116478 — A Traditional Chinese Medicinal Composition for Treating Femoral Head Necrosis and Its Preparation Method 

When multiple versions of a medicinal product information leaflet exist, and the sales invoice does not specify a particular version, the product name and sale date alone are insufficient to establish the disclosure date of any specific leaflet version.

2. Public Use: 

Determination of Authenticity and Public Disclosure Timing for Sold Products 

Case No.: 5W135377 — Idemitsu Organisation and Hair Removal Device 

When identical products of the same model are obtained from multiple consumers through an ‘old-for-new exchange’ channel on an e-commerce platform, and the acquisition process along with transaction information are safeguarded through notarized preservation, such products may be regarded as publicly sold on the platform as of the transaction snapshot date. This presumption holds provided the products share the same structural features and do not exhibit any apparent signs of replacement or substitution during use, unless there is sufficient contrary evidence to rebut this assumption.

Evidence Assessment for ‘Exhibition Disclosure’ 

Case No.: 6W116747 — Bicycle (Women's Model) 

The applicant attempted to demonstrate that the design was publicly exhibited at Exhibition B prior to the filing date by submitting photographs sourced from Website A. However, if these photographs were uploaded by a user and the ‘exhibition information’ displayed on the webpage was also self-edited by that user, and if the webpage does not show the upload time of the photos or if other evidence regarding Exhibition B is inconsistent with the photographs, then such photographs are deemed insufficient to reliably reflect the actual circumstances of the exhibition. Consequently, they cannot serve as conclusive proof that the design was publicly exhibited at Exhibition B before the filing date.

Evidence of Pre-filing Sale of a Product’s Specific Structure 

Case No.: 5W135632 — Platform Machine for Positioning Underground Working Face Hydraulic Supports 

When a specific model of a product manufactured by a producer was publicly sold prior to the filing date of the patent in question, and multiple pieces of evidence from different sources document the specific structure of that model, which can corroborate each other, such evidence may be used, in the absence of contrary evidence, to establish that the particular model was publicly sold before the filing date. This remains true even if some of the evidence’s disclosure date is later than the patent’s filing date.

3. Internet Disclosure: 

(1) Determination of Publication Date for Webpage Archives from the 'Internet Archive' 

Case No.: 4W116322 / 4W116768 — Multifunctional Purifier 

When utilizing webpage archives from the ‘Internet Archive’ as prior art evidence, the publication date must be determined in accordance with the website's operational mechanisms. First, the Internet Archive assigns a unique URL to each archived webpage, with the specific numeric segment of the URL indicating the time of capture and archiving. Second, elements such as images within the webpage may be captured multiple times, each with its own recorded capture time. As a result, the capture time of the webpage archive may differ from that of its contained images or other elements. Lastly, because the website systematically and consistently assigns URL addresses to archived files, the URLs for both webpages and images typically follow identical naming conventions and formats. Therefore, unless there is evidence to the contrary, the numerical information within an image URL indicating date and time can generally be regarded as the time at which that image was archived. This timeframe is recognized as the date of public disclosure of the image on the Internet Archive website.

B) Novelty

Interpretation of the Principle of Isolated Comparison in Novelty Assessment 

Case No.: 4W117946 / 4W117974 — Conductive Adhesive 

When prior art documents disclose the name of a commercially available chemical product but do not specify its physical or chemical property parameters, the introduction of measurement results from other evidence regarding these parameters is considered merely a confirmation of the disclosed properties. Provided that the chemical product’s structure and composition can be uniquely determined, such supplementary evidence does not breach the principle of individual comparison in novelty assessment.

Role of Cited Documents When Using Patent Documents as Prior Art 

Case No.: 1F554680 — User Equipment Equipped with SDR Capability 

When a patent specification references documents that reflect its background technology, and such cited documents meet the relevant requirements of the Patent Examination Guidelines, the patent itself shall be deemed to incorporate the content of those cited documents. When using such a patent document as prior art, the information contained in the cited documents that is closely related to the patent in question may be regarded as disclosed within the scope of prior art—doing so within the bounds of what is reasonably expected by the parties involved.

Determination of PCT Applications as ‘Prior Applications’ 

Case No.: 1F609940 — Method for Constructing MPM Lists, Method and Apparatus for Acquiring 13-Mode Intra-Frame Prediction of Chrominance Blocks 

Upon entering the Chinese national phase, a PCT international application has the same legal effect as a patent application filed directly with the China National Intellectual Property Administration. If all other statutory requirements are met, such a PCT application can be used as prior art in the novelty assessment of subsequent patent filings.

Conditions for Claiming the ‘Novelty Grace Period’ 

Case No.: 5W135853 — Integrated Support Floating Breakwater Support 

When a patent applicant or patent holder seeks to invoke the novelty grace period after the filing date—upon discovering that a third party disclosed the content without their consent—the following conditions must be met: 

1. The disclosure must have occurred within six months prior to the filing date. 

2. The applicant or patent holder must submit a declaration to the National Intellectual Property Administration within two months of becoming aware of the disclosure, requesting the preservation of the grace period, and provide supporting evidence. 

3. The technical solution disclosed by the third party must derive directly or indirectly from the applicant or inventor. 

4. The disclosure by the third party must have been made without the applicant's consent.

C) Inventive Step

Determination of the Role of Distinguishing Features in Comparative Documents 

Case No.: 1F516906 — Chip Heat Exchanger and Variable Frequency Air Conditioner 

When assessing whether prior art provides technical guidance, it is essential not only to evaluate whether the comparison document discloses the same or similar technical means as the distinguishing features but also to adopt the perspective of a person skilled in the art. The overall operational process documented in the comparison document should be carefully analyzed to determine whether the role of these technical means or the technical problems they address are essentially the same.

Prior Art from Different Application Fields May Provide Combined Guidance 

Case No.: 4W116379 — Adsorption-based Self-propelled Device 

In assessing inventive step, the actual technical problem addressed by the invention should be redefined based on the closest prior art. Guided by this redefined problem, a person skilled in the art would be motivated to seek solutions within adjacent or related technical fields—not limited solely to the patent's field or the closest prior art. When prior art documents from these related fields disclose the use of identical technical means to solve the same technical problem, they can serve as a technical suggestion for combining such references with the closest prior art to derive the claimed invention.

Determination of Technical Inspiration in Combined Medication Inventions 

Case No.: 1F409289 — Combined Use of Nitroxoline and Its Analogues with Chemotherapy and Immunotherapy in Cancer Treatment 

When evaluating inventive step in combined medication inventions, it is essential to carefully consider whether two or more prior art documents provide a concrete combined teaching. This requires a comprehensive analysis of factors such as whether the prior art reasonably suggests successful substitution, the differences between chemical drugs and antibody-based treatments in terms of modalities and efficacy, and the specific targets and mechanisms of action involved. Simply citing a broad statement in the prior art—such as 'may be used in combination with other drugs'—does not constitute clear technical guidance for combining the various references or deriving the claimed invention.

Determination of Technical Inspiration for Pharmaceutical Inventions 

Case No.: 1F409289 — Combined Use of Nitroxoline and Its Analogues with Chemotherapy and Immunotherapy in Cancer Treatment 

For pharmaceutical inventions, when a prior art document merely lists numerous potential indications for a specific drug component without addressing the underlying pathogenesis and therapeutic mechanisms, and without verifying the drug’s efficacy for those indications, the inherent complexity of the drug’s mechanism and the differences among the indications generally prevent a person skilled in the art from deriving clear technical guidance from such prior art.

Summary

The recent cases outlined by the Patent Office’s Re-examination and Invalidation Division highlight critical advancements in the standards and methodologies of patent examination. Emphasizing a meticulous approach to prior art evaluation, these cases underscore the importance of clear documentation, corroborative evidence, and nuanced analysis across various technical fields. As patent practice continues to evolve, these insights serve as valuable benchmarks for applicants and examiners alike, fostering a balanced and robust patent system that incentivizes genuine innovation while safeguarding public interests.