[Author: Liuxin Jin]
In patent examination, the examiner will cite a prior art document in order to determine whether or not an invention or utility model is novel and inventive. The applicants challenge the implementability of the cited prior art frequently, and consider the prior art document itself to be subjected to serious errors and non-implementability, and thus unqualified to be cited as the prior art or a conflict application for determining the novelty or inventiveness of a later application. Can a non-implementable solution serve in the determination of novelty/inventiveness? This article provides a primary discussion on the above problem with reference to Chinese patent examination practice or judicial cases in view of relevant articles and regulations of various countries and regions, hoping to inspire the response to OAs in patent practice.
I. Relevant articles and regulations of various countries and regions
In a comparison of the provisions relating to the prior art under the Guidelines for Patent Examination of the CNIPA, the EPO, the USPTO, and the JPO, it can be seen that the EPO and the JPO impose relatively higher requirements for the implementability of the prior art: only those implementable based on disclosure of explicit publication of the common general knowledge or the customary knowledge in the art can be cited as a “reference document”. According to the regulations of the USPTO, it is first presumed that the prior art is operable/implementable; the applicant needs to provide evidence to overturn the presumption[1]. The US Court generally considers that the prior art jeopardizing novelty must be implementable, but does not require the prior art for assessing non-obviousness to be implementable[2]. Whereas in Chinese local practice, the Guidelines for Patent Examination 2010 specifies that the prior art should contain “substantial technical knowledge”, but does not mention the implementability of the reference document. In Chinese patent examination, considering the factors including examination efficiency and cost and capability of evidence production, the examiner often does not proactively verify whether or not a reference document is implementable[2]. Although applicants are given the opportunity to reasonably question whether or not the reference document is implementable in the determination of novelty for a compound, no specific guidance is provided for the applicant to produce evidences.
Since the requirements for the prior art vary in different countries, it is possible that an application is rejected in China while its counterpart applications are easily allowed in countries/regions such as the European countries, the United States, and Japan based on the same reference document (e.g., the exemplary case below).
II. Exemplary Case Study
As can be seen from relevant cases of patent examination or judicial cases in China, mainly the disputes as to whether or not the reference document is implementable concentrate in the fields of low predictability, such as chemical pharmaceuticals and chemical materials. In the examination practice, often a principle of “disclosure by mention” is followed in the examination practice for a compound, unless the applicant can provide evidence proving that the compound was not available prior to the filing date. However, we cannot yet find a judicial case where the applicant successfully convinced the judge by producing evidence of non-implementability. With that said, in the following case, although the evidence submitted by the applicant was not accepted, the court provided some guidance for the applicant with regard to the evidence.
Exemplary Case: (2020) Supreme Intellectual Administrative No. 97 (collected in Substance of Adjudications made by Intellectual Property Court of Supreme People’s Court (2020))
Second instance for the administrative dispute over reexamination on rejected patent application for invention of Albemarle v. CNIPA
Claim 1 of the subject application claims a compound used as a flame retardant, having the formula: 
.
Reference 1 discloses a compounds of Formula (1) 
, where R may be 1,2-ethylene.
Albemarle submitted Evidence 1 (experimental report of the inventor of the subject application) which recorded the inventor’s attempt to produce the compound according to claim 1 of the subject patent application by two different methods in the presence of triethylamine with the process described in Example 1 of Reference Document 1 (shortened to D1), in order to prove that the method of D1 cannot be used to prepare the object substance of claim 1 of the subject application. Albemarle considered that D1 cannot effectively jeopardize the novelty of the subject application.
The court of second instance (Supreme People’s Court) held that, an applicant or a patentee not only should prove that the compound could not be prepared using the experimental methods disclosed by the reference document, but also should prove that the compound could not be prepared by conventional experimental methods in the art adapted accordingly based on the raw materials and the like while excluding potential non-exploratory factors and giving full play to the conventional skills of one of an ordinary person skilled in the art. Specifically in this case, the attempt of producing the compound according to claim 1 of the subject application was made using only triethylamine as the base in Evidence 1; but in fact D1 did not explicitly limit the base. In a case that the base had significant influence on the synthesis reaction, without explicit limitation of D1, it would be totally possible that a person skilled in the art tries to synthesize the compound according to claim 1 by altering the base. Therefore, the evidence provided by Albemarle was inadequate for convincingly questioning the availability of the compound of the subject application prior to the filing date.
As shown in the exemplary case, in Chinese patent examination and judicial practice, the applicant is subjected to heavy burden of proof in order to challenge the implementability of the reference document cited for the determination of the novelty of the compound. The burden of proof of the applicant extends beyond the disclosure of the reference document; the applicant should further prove that the compound cannot be obtained by conventional experimental methods in the art before the filing date.
As to other subject matters such as composition or preparation method, etc., it is found through case study that the principle of “disclosure by mention” unless proved otherwise by the applicant also may be applied (e.g. (2015) Intellectual Administrative No. 264, (2020) Supreme Intellectual Administrative Final No. 270, (2020) Supreme Intellectual Administrative Final No. 200). However, the burden of proof of the applicant for the novelty of the compound as described in the above exemplary case should be fulfilled.
III. Tips
In light of the above case and the huge amount of existing prior art including technical information that is completely speculative or non-implementable, the following tips are proposed to start further discussion of the readers on this issue.
It is recommended to carry out comprehensive search for important patent applications before filing. Upon finding a relevant document, even if considered not implementable, the applicant should not ignore the searched document. Instead, the applicant may specify the defects of this document in the section of background art of the specification and add comparative experiments with regard to this document in the specification. Usually, the examiner acknowledges the disclosure and data contained in the original application documents more than data supplemented after filing.
In some cases, the novelty or inventiveness of a later application is jeopardized by accidental disclosure by prior applications of the applicant or patentee. For example, the prior application may mention a compound in an extended deduction, in particular by listing exemplary compound formulas. In view of the difficulty of proving the non-implementability of the listed solutions later, it is advisable that the applicant or patentee consider the overall patent portfolio and elaborate an earlier application to a proper extent. In order to avoid excessive disclosure of a solution that is still a concept or at the early development stage, the applicant may flexibly make use of the priority right system. In addition, it is not recommended in China to disclose a case expected to be filed subsequently based on further improvement.
In practice, the applicant or patent agent can pay attention to the implementability of the cited reference, taking into account the fact that the substantial requirements for reference documents vary in different countries. There can a chance to overturn the office opinions in the case that the cited reference document contains obvious technical drawback that is sufficient to render the whole solution of the reference document non-implementable, for example, the cited document fails to provide implementable technical means or merely describes ambiguous technical means. An example is the case of Reexamination Decision No. FS2147, where the cited D1 fails to specify the claimed NA-21 enzyme preparation in the specification of the subject application, and there is no proof that the NA-21 enzyme preparation has been disclosed prior to the filing date of subject application, so the collegial panel considers that D1 cannot be cited as prior art, nor can it prejudice the novelty and inventiveness of the subject application[3]. In addition, in the case that the claimed solution of the subject application is disclosed due to erroneous description of a reference document, the applicant or patent agent may also argue from the perspective that the solution of erroneous description cannot constitute the substantial technical content of the reference document. This argument is relatively more likely to be accepted by the examiner or the judge (e.g. Decision No. 53977 on Examination for Invalidation Declaration Request, (2021) Supreme Intellectual Administrative Final No. 83).
Meanwhile, in the case that the cited reference document does not contain significant defects, the applicant or the patentee needs to present adequate proof in order to challenge the implementability of the solution disclosed by the cited reference document. An experiment involved is preferably carried out by an independent third-party expertise institution. The experiment needs not only to completely reproduce the disclosure of the reference document, but also to try the conventional methods in the art. Participation of a notary institution or experts can improve the credibility of the submitted evidence. Notary or certification is required for evidence formed abroad and webpage that is inaccessible in China (e.g., youtube, etc.). In view of the great difficulty in fulfilling the burden of proof with this kind of evidence in China, it is recommended that the applicant or patentee mainly rely on making amendments or arguing from other perspectives. It is also recommended for a petitioner for patent invalidation declaration to avoid using controversial evidence of this kind as a comparison document in Chinese local practice.
Citations:
[1] Kou Fei, Zhou Mingxin: Effects of Inadequate Prior Art Disclosure on Determination of Novelty/Inventiveness, Chinese Inventions and Patents, Volume 8, 2014, p80-83
[2] Pei Shaoping, Qu Yan, Pang Mingjuan, Yin Weiwei: Comparison of Requirements for Adequate Disclosure of Prior Art Documents, Volume 18, 2012, p88-90
[3] Bu Wenfeng, Yao Lihua, Wang Yangping, Wu Quanwei: Determination of Novelty/Inventiveness and Adequate Disclosure of Prior Art Documents, Selected Collection of 6TH Intellectual Property Forum and Annual Conference 2015 of All-China Patent Attorneys Association
