The Guidelines for Patent Examination stipulates in Part 2, Chapter 4 that the baseline of determining the inventive step is the "Tripartite" approach, in which factors such as "commercial success" may be secondary considerations in forming that determination. If an invention is "commercially successful," it may therefore be determined as possessing prominent substantive features and making notable progress, thus meeting the inventive requirement; and even if its differentiating features are anticipated by the technical teachings of the closest analogous art, inventiveness shall not be denied.

Zhang Peng

In the patent invalidation and the subsequent judicial review proceedings for the patent "B-Type Ultrasound Monitor for Female Birth Control Operation," the invalidation decision and the first-instance ruling for lack of inventiveness were both based on the references proffered by the requester. On appeal, the patentee raised new grounds for commercial success of the patented product, and submitted new evidence for it, including Reference 1: Testimonial statements of 11 experts from a hospital, to the effect that the invention "Transvaginal Interventional Ultrasound Birth Control Operation" has increased the success rate of induced abortion operation, decreased postoperative complications and solved the problem of invisible operation for obstetricians; Reference 2: Government Procurement Contracts signed by Hubei Province Birth Control Service Station, Procurement Contracts signed by Henan Province Population and Birth Control Committee, and Government Procurement Contracts signed by Heilongjiang Provincial Government to show that the above-mentioned government departments haveall purchased a certain number of B-Type Ultrasound Monitor for Gynecological Operations; Reference 3: Statement and Certificate for Publication provided by Chinese Medical Multimedia Press, showing its publication and nationwide distribution of DVDs for "Transvaginal Interventional Ultrasound Birth Control Operation."

The second-instance court affirmed that References 1 and 3, which had been newly provided by the appellant in the second instance, were able to prove that the patent and the B-Type Ultrasound Monitor for Gynecological Operations produced according to the technical protocols of the patent have increased the success rate of induced abortion operation, decreased postoperative complications and solved the problem of invisible operation for obstetricians. References 2 and 3 are able to prove that B-Type Ultrasound Monitor for Gynecological Operations produced according to the technical protocols of the patent has been extensively promoted across China and has taken up certain market share through government procurement. The aforesaid proofs can prove that the patent is commercially successful, which is caused directly by the technical features of the patent. Therefore, the second-instance court accepted the appeal of the appellant that Claim 1 of the patent involves an inventive step when being compared with the combination of Annex 2 and 4.

The Patent Reexamination Board of the State Intellectual Property Office (SIPO) appealed to the Supreme People's Court in allusion to the aforesaid second-instance ruling, and The Supreme People's Court has placed the case on file. Despite o f the legal issues including the legitimacy of inclusion of new proofs in patent administrative procedures and admission of testimony by expert testifiers, this case highlights the impact of commercial success of inventions upon judgment of inventive step, which should arouse wide concern and in-depth researches across the patent industry. This article will discuss about the cognizance of commercial success of inventions.

I. Legal status of "commercial success of inventions"

In the provisions of Chapter 4, Part 2 of China's Guidelines for Patent Examination, the basic norm of examination for determining inventive step is: whether the technical solution has prominent substantive features through the "tripatite" approach, and whether the invention has made notable progress on the basis of whether it has beneficial technical effects. In the meanwhile, such other factors should also be considered in determining the inventiveness, including such secondary considerations as "solving a long-felt but unsolved technical problem," "overcoming a technical bias," "unexpected technical result" and "commercial success." These factors are sufficient conditions for technical solution to involve an inventive step. If an invention is "commercially successful," it should be deemed as having prominent substantive features and making notable progress, and it thus involves an inventive step. Even if the analogous arts closest to the invention already has technical implications for its distinguished features when comparing the two, it should be deemed as involving an inventive step as well. In other words, if the "commercial success of an invention" can be proved, the inventiveness of the patent claims is recognized without the need of the "tripartite" analysis.

II. Principles for cognizance of "commercial success of inventions"

According to the provisions in Chapter 4, Part 2 of China's Guidelines for Patent Examination, "when an invention product is commercially successful, and if its success is caused directly by the technical features of the invention," it should be concluded that "such inventions have prominent substantive features and have made notable progress, and thus they involve inventive steps." Therefore, cognizance of the "commercial success of an invention" has two major conditions: the commercial success; such success is directly caused by the technical features of the invention. As to the principles for cognizance of "commercial success of inventions," first, the applicant is required to file a claim for "commercial success of inventions," because it does not fall into circumstances where such success is discovered ex officio by competent authorities. Second, "commercial success of inventions" as a matter of fact-finding issue should be proved by proofs. "Commercial success of inventions" is not a matter of application of law; therefore, materials which can prove the commercial success and that such success is directly caused by the technical features of the invention should be provided as proofs. Last, the timeline for "commercial success of inventions" is not confined to the date prior to the date of application. Different from other evidentiary materials showing the inventive step, materials used to demonstrate "commercial success of inventions" are not required to be disclosed prior to the date of application of the patent, even the majority of them occurred after the date of application of the patent, thus proving that the technical solution protected by the patent has directly caused the commercial success. For example, Reference 3 in this case all occurred after the date of application of the patent, to prove the sales of the relevant products.

III. Cognizance of commercial success

Proof materials that can be used to prove "commercial success" include:

(1) Proof materials related to sales, mainly including sales contracts, invoices, bills of lading, bank deposit receipts, import and export credentials, etc.; the materials concerning range of sales areas, distribution of sales outlets and sales channels and methods, etc.

(2) Proof materials related to promotions, mainly including advertisements, comments and other promotional materials in media such as radio, film, television, newspapers, periodicals, Internet and outdoor media; the materials for the products at exhibitions and expositions.

(3) Proof materials related to application and protection, mainly including the materials about the earliest time of application and continuous application of the product; materials about the infringement upon the product.

(4) Other proof materials, mainly including technical valuation reports from qualified valuators; the product's amount of sales, profit tax, statistics and rankings, advertising investment published by credible authorities and industry associations; the awards the product has won.

The above proof materials can all be used to prove the commercial success, but they differ in the degree of probative force. Relatively speaking, proof materials related to sales are direct proof for commercial success and have a stronger degree of probative force. In the current situation of China, proof materials such as government procurement or tendering records have relatively stronger degree of probative force to prove the commercial success.

IV. Cognizance directly caused by technical features of inventions

Once commercial success has been proved, the next step is to affirm that such success is directly caused by the technical features of the invention, namely: the casual relationship between the technical features of the invention and commercial success has formed the "directly causing" relationship. The formation of this "directly causing" relationship has to meet two requirements, one is that the technical features of the invention must be a condition for "commercial success," the other is that the technical features are sufficient to cause "commercial success."

It is relatively easy to affirm that the technical features of an invention are a condition to cause "commercial success," and the "but for" approach can be taken in the affirmation, that is: but for the technical features, there is inevitably no commercial success; with the technical features, often there can be commercial success. As to this case, if the technical features of the patent do not exist, the government procurement contracts as listed in Reference 2 will all meet difficulties to be signed. Then it can be affirmed that the technical features o f the patent are a condition for the "commercial success."

In addition, it is relatively complicated to affirm that the technical features are sufficient to cause "commercial success." Thus the author proposes the following method: the major premise: the technical features of the invention are capable of achieving commercial success according to general commercial practice and cognition of the technical personnel in the field; the minor premise: in reality, the technical features have caused the commercial success; the conclusion: the technical features are a proper condition for the commercial success, and there is a causal relationship between the two. Particularly in this case, 11 experts have provided expert testimony proving that the new technology "Transvaginal Interventional Ultrasound Birth Control Operation" has increased the success rate of induced abortion operation, decreased postoperative complications and solved the problem of invisible operation for obstetricians.

The aforesaid expert testimony is able to prove that the technical features can cause such commercial success according to the cognition of the technical personnel in the field. Reference 2 further proves that the technical features have, in reality, caused the commercial success; therefore, a conclusion can be reached that "the technical features are a proper condition for the commercial success, and there is a causal relationship between the two." It should be noted that, in general situations, only when the patent in the case constitutes the overall structure of the product or the steps of the overall method can the technical features be sufficient to cause "commercial success." If the patent in the case is the structure of one section of the product, besides proving that the technical features are sufficient to cause the "commercial success," irrelevance between other technical features of the product and the commercial success should be considered as well.

(Translated by Wang Hongjun)