The Beijing Intermediate and Higher People’s Court have exclusive jurisdiction to review decisions of the Chinese Patent Office. They not only deal with rejection decisions on Patent Applications, but also administrative decisions in post-grant Cancellation Proceedings. In 2013, 641 cases were dealt with. Some important rules for practice can be derived from this volume of judgments.

The question of inventive step occurs most frequently, namely in 60% – 70% of cases. This is followed by questions on novelty and sufficiency of disclosure.

The following rules have emerged for determining the inventive step:

• Chemical compositions are defined by the substances present and their quantities. When comparing with a known composition, it must be assessed whether the effects of the changed composition or quantity ratios were foreseeable for the skilled person.
• If a claim covers a broad group of substances, then the inventive step of this claim is to be denied if only one substance of the group has neither an unexpected effect nor an unexpected use.
• When assessing the inventive step, the “overall rule” must be observed. This means that the technical solution must be assessed as a whole and not broken down into individual features.
• Furthermore, the “three-dimensional rule” must be applied to the inventive step. This means that not only the technical solution itself must be considered, but also the task set and the effect achieved.

The following criteria, for example, are important for the question of whether the claimed invention is sufficiently disclosed in the patent description.

• The legal requirement of sufficient disclosure is intended to prevent an invention from being protected but not being reworked by the skilled reader. If a composition is claimed for which the skilled person would hardly expect the claimed technical effect, the essential experimental data must be included in the description.
• Claims are usually a generalization of individual embodiments. If the generalization is correct and comprehensible, then the claim is sufficiently supported by the embodiments. However, if the relationship between the general definition of the invention and the examples of embodiments is unclear, then the claim is not allowable.
• If the invention has a per se known feature that has a new effect, then this effect must be explained in the description. Otherwise, it is assumed that the feature in question has the same effect in the context of the invention as in the prior art.
• An invention which shows special effects which cannot be explained with known theoretical knowledge is sufficiently disclosed if the person skilled in the art can rework the technical solution and realize the special effects.

Such rules should be observed when drafting a Patent Application. And they can help in defending the claims during Examination Proceedings.

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