A case handled by Sum Lam, Patent Litigator and Chinese Attorney-at-Law of Squire Hong Kong Office, has just been selected as a Guiding Case 2016 by Peking IP Court.
The case is an administrative litigation for Chinese patent application 200710007290.2 published as CN101007901A (corresponding to DE102006003957 (A1) US2009022898 (A1) US8147918 (B2) KR101354886 (B1) JP5634676 (B2) WO2007085320 (A2) EP1976940 (A2) CN105646879 (A) BRPI0621249 (A2) ) between DEGUSSA (now Evonik) v. Chinese Patent Re-examination Board.
This case is significant in that as one can spot in almost all Chinese, US or EP Office Actions, the Examiner follows the “three-step method”, i.e., involving identifying a distinguishing feature based on the prior art searched out by the Examiner and assessing if the distinguishing feature and its use have been taught in the prior art.
In this case, Lam Sum contended that this approach per se is fundamentally flawed, because 1) in assessing inventivity, the Examiner must take the problems solved or effects attained, as taught in the Description, into consideration, and 2) must acknowledge the fact that what contributes to the effect is the technical solution as a whole, not just one or two features thereof.
The Court thus overturned the Decision of the Chinese Patent Re-examination Board. Consequently, negative decisions of several other cases that follow (with the similar issue) were overturned.
In addition to this case, Lam, Sum has also many other cases selected as Guiding cases, including:
Saint Gobain v FU Yao Glass manufacture (Invalidation) 2009-2010
Pfizer v Chinese Patent Re-examination Board (Re-trial at Chinese Supreme Court) 2014-2015