Inventive step

Grünenthal GmbH vs CNIPA: Intellectual Property Court of the Supreme People’s Court of China (SPC), filed as (2019) SPC IP Admin. Final 12

In this case, the SPC specified a criterion for assessing the inventiveness of novel crystalline forms of compounds. Although the preparation of the novel crystal form has a certain degree of uncertainty, merely preparing and obtaining a novel crystalline form does not necessarily mean that the said crystalline form meets the requirement of inventiveness under the patent law.

CNIPA vs Jiangsu and High-tech Research Institute of Nanjing University: 2020 SPC IP Admin. Final 35

In this case, the SPC established an adjudicative standard for identifying common technical knowledge (CTK) and its evidence in the relevant technical field. The identification of CTK as well as evidence of CTK may determine the technical knowledge and cognitive capability that so-called persons skilled in the art shall possess, and, hence, is of significant influence on inventiveness assessment at issue.

DAI Jinliang vs China National Intellectual Property Administration (CNIPA): SPC IP Admin. Final 16

In this case, the SPC pointed out that in terms of inventiveness assessment, if a person skilled in the art cannot obtain the biological material claimed in the patent by repeating the preparation method in the reference document, then the claimed biological material shall be identified as being not disclosed by such reference document.

Actavis Group PTC EHF and others v ICOS Corporation and another (United Kingdom Supreme Court, 2019)

This judgment deals with an appeal submitted to the Supreme Court of the United Kingdom (hereinafter “the Supreme Court”) that concerns an application of a test of obviousness on a dosage patent under section 3 of the Patents Act 1977. The Court held that the inventiveness of dosage patent claims needs to be determined on a case by case basis and that the routine nature of the research that resulted in the discovery of a lower efficient dose undermines the inventiveness of the claims.

Copolymers/Dupont, T124/87, OJ 1989 (1988) (European Patent Office Boards of Appeal)

In this case, the European Patent Office Boards of Appeal decided on the patentability of a class of compounds defined by parameters within numerical ranges. It denied the grant of a patent, finding that the invention lacked novelty and an inventive step.

KSR International Co. v. Teleflex Inc. et al., 550 U.S. 398 (2007)

This case concerned the condition of non-obviousness as a prerequisite for patentability. The Supreme Court of the United States (hereinafter: the Court) reinforced the objective analysis approach for applying 35 U.S.C. §103 (i.e. the domestic provision on non-obviousness) as it was established with the three determining factors in Graham v. John Deere.

Graham v. John Deere Co. of Kansas City (United States Supreme Court383 U.S. 1, February 21, 1966)

In this case, the U.S. Supreme Court established that the element of non-obviousness must be assessed with the help of the following factors: (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue and (3) the level of ordinary skill in the concerned art.  Furthermore, secondary considerations may be commercial success, long felt but unresolved needs or the failure of others to find a solution.

Pharma Dynamics (Pty) Ltd v. Bayer Pharma AG, 2014 (The Supreme Court of Appeals of South Africa)

In this case, the Supreme Court of Appeals interpreted the claims of a pharmaceutical divisional patent and examined its novelty and inventive step. The Court also provided guidance on the admissibility of divisional patents under South African law.

Novartis AG v. Union of India & Others (Supreme Court of India, 1 April 2013)

On 1 April 2013, the Supreme Court of India confirmed the rejection by the Indian Patent Office of a patent application filed by Swiss drug maker Novartis on the anti-cancer medicament “Glivec”. The Supreme Court considered that Glivec did not qualify as a patentable “invention” under Section 3 (d) of the Indian Patents Act.