Wu Xiaohui December 12 2022 SPC sets out test for ascertaining what constitutes common knowledge evidence Wanhuida Intellectual Property | Intellectual Property - China Wu Xiaohui Intellectual Property IntroductionFactsBeijing IP CourtSPCCommentIntroductionWhen assessing inventiveness in patent prosecution and invalidity procedures, common knowledge evidence is often cited as a benchmark of the technical knowledge and awareness of persons skilled in the art. However, common knowledge is poorly defined in China's patent laws and regulations. The Guidelines for Patent Examination list three forms of common knowledge evidence:textbooks;technical manuals; andtechnical dictionaries.In the absence of a clear definition, stakeholders often struggle to ascertain what constitutes common knowledge in practice. In Targetpharma Laboratories et al v CNIPA, the Supreme People's Court set out a test to evaluate whether books could be admitted as common knowledge evidence.FactsThe case related to the invention patent application of "Tumor-targeted TNF [tumour necrosis factor]-related apoptosis-inducing ligand's variant and the application thereof". The China National Intellectual Property Administration (CNIPA) rejected the application on the ground that it was devoid of an inventive step. The rejection was affirmed in the re-examination procedure, where the CNIPA cited Volume 8 of the Frontier of Tumor Research as evidence of common knowledge to support the finding of obviousness of the application.The patent applicants – Targetpharma Laboratories and High-tech Research Institute of Nanjing University, Changzhou – filed an administrative lawsuit with the Beijing IP Court, challenging the re-examination decision.Beijing IP CourtThe Beijing IP Court sided with the plaintiffs, holding that Volume 8 of the Frontier of Tumor Research, which was neither a textbook nor a technical dictionary, was a mere periodical on tumour research. The CNIPA had erred in using it as common knowledge without assessing its admissibility. The Beijing IP Court quashed the CNIPA's decision and ordered the agency to make a new decision.The CNIPA appealed to the SPC, contending that periodicals, as continued publications, should use an international standard serial number rather than an international standard book number (ISBN). Given that Volume 8 of the Frontier of Tumor Research only had an ISBN, it was not a periodical, but a book. Volume 8 of the Frontier of Tumor Research documented the knowledge related to Asn-Gly-Arg sequence polypeptides, which had been cited in the re-examination decision as known common knowledge in the art.SPC On 13 August 2020, the SPC dismissed the appeal and upheld the decision made by the Beijing IP Court.The SPC reasoned that, in general, whether relevant technical knowledge may be classified as common knowledge could be evidenced in the technical art, such as technical dictionaries, technical manuals and textbooks. Where this approach fails, stakeholders may resort to evidence (eg, patent literature, periodicals and magazines) that is not common knowledge in the art yet is mutually corroborative to prove that the technical knowledge is common knowledge.However, this approach is subject to a high bar of proof. In assessing whether literature other than technical dictionaries, technical manuals and textbooks documents fundamental technical know-how in the art and thus should be admitted as common knowledge evidence, courts must factor in metrics such as:the carrier form;the content and characteristics;the audience and dissemination scope.The SPC analysed the admissibility of Volume 8 of the Frontier of Tumor Research as follows.Carrier formThe acronym "ISBN" had been used in China for many years. The fact that Volume 8 of the Frontier of Tumor Research had an ISBN substantiated that the publication fell under the category of "books", if judging from the carrier form.Content and characteristicsIn terms of content and characteristics, the publication was a book, not a textbook. The preface of the book stated that its objective was to keep peers and researchers abreast of the world's progress in tumour research in layman's terms, which made it a combination of a treatise, an overview, a commentary and a work of popular science. The preface indicated that the book aimed to introduce the latest progress in terms of tumour research around the world, rather than to provide general technical know-how in the field. Thus, the book was not a textbook in the usual sense.Audience and dissemination scopeLastly, judging from its audience and dissemination scope, the publication could hardly be ascertained as a textbook. The "content abstract" on the copyright page of the book indicated that it was not a textbook, but a reference book for professional researchers. The SPC therefore concluded that the cited publication was a book, not a textbook, which definitely did not qualify as common knowledge evidence.CommentCommon knowledge evidence carries considerable weight in an assessment of inventiveness. For this reason, the SPC underlined in its decision that the determination of common knowledge should:be incontrovertible and supported by sufficient evidence or argument; andnot be made lightly.Common knowledge evidence is used as a benchmark of the fundamental technical know-how and competence of persons skilled in the technical art. The technical means that are being assessed fall under the sphere of common knowledge, provided that such means have been universally acknowledged in the art. With regard to the carrier form of the evidence, technical dictionaries, technical manuals and textbooks that are extensively used as reference books may be admitted as common knowledge evidence. Books and other publications need to pass the same test to be admitted as common knowledge evidence.In other words, if the cited evidence focuses on the latest research progress, it does not suffice to prove that the documented technical know-how has been widely used in the art, unless corroborated by the breadth and depth that such technical know-how has been utilised by persons skilled in the art.During the appeal, the CNIPA submitted several items of prior art literature in an attempt to prove that the technical means at issue fell under the category of common knowledge. The SPC rejected such evidence on the ground that it altered the grounds and basis of the findings of the litigious decision. Nonetheless, the SPC affirmed that the CNIPA could still introduce the evidence and solicit comments from the applicants when remaking its re-examination decision.It remains to be seen whether Volume 8 of the Frontier of Tumor Research, in combination with other literature, may be perceived as common knowledge in the CNIPA's second re-examination procedure.For further information on this topic please contact Wu Xiaohui at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.An earlier version of this article was published by MIP.