Viewpoint | A Brief Analysis of the Impact of Inventive Concept Differences on Patent Inventiveness Judgment, Illustrated by a Case of Administrative Dispute over Invalidation of an Invention Patent Right
Published:
2025-06-10
In today's era of rapid technological innovation, competition in the field of intellectual property rights is becoming increasingly fierce. Patents, as an important legal form of protection for the results of technological innovation, their validity directly concerns the core competitiveness and market position of enterprises. Recently, the number of administrative disputes over patent invalidity has shown a significant growth trend. This phenomenon not only reflects the high importance that enterprises attach to patent value, but also highlights the urgency of accurately determining patent validity. Against this backdrop, an in-depth analysis of typical administrative disputes over patent invalidity, such as the case of the invention patent invalidation of “A method for hydrolyzing corncob to obtain xylose hydrolysate”, is particularly necessary. It will provide valuable reference and enlightenment for enterprises in the process of patent layout and rights protection.
In the current era of surging technological innovation, competition in the field of intellectual property rights is becoming increasingly fierce. Patents, as an important legal form of protection for the results of technological innovation, their effectiveness directly affects a company's core competitiveness and market position. Recently, the number of administrative disputes over patent invalidity has shown a significant increase. This phenomenon not only reflects the high importance companies place on patent value, but also highlights the urgency of accurately determining patent validity. Against this backdrop, an in-depth analysis of typical administrative disputes over patent invalidity, such as the case of the invention patent invalidation of “A method for hydrolyzing corncob to obtain xylose hydrolysate”, is particularly necessary. It will provide valuable reference and enlightenment for enterprises in the process of patent layout and rights protection. xylose hydrolysate method
I. Basic Case Information
Recently, the Supreme People's Court made a second-instance judgment ((2023) Supreme People's Court Zhixing Final 87) in a case of administrative dispute over the invalidation of an invention patent for “A method for hydrolyzing corncob to obtain xylose hydrolysate”, which I represented. The judgment supported the view that the patent should be declared invalid. When the invalidity claimant, Shandong Company, challenged the validity of the patent, a large amount of retrieval work was carried out to accurately identify the closest prior art literature, focusing on the main distinguishing technical features and consistently arguing the existence of combined technical implications. The Supreme People's Court ultimately supported this view.
The invalidation of a patent right refers to the process by which a patent right, after being granted, is declared invalid because it does not comply with the provisions of the Patent Law or other statutory reasons. This is usually due to improper conduct or technical defects on the part of the patentee. Once a patent is declared invalid, the patent right is void ab initio and loses legal protection, and anyone can use the technology free of charge. Therefore, the invalidation of a patent right is of great significance to enterprises and inventors.
I represented the invalidity claimant, Shandong Company, throughout the administrative review stage and subsequent two-level administrative litigation judicial review in this case. In this case, the State Intellectual Property Office maintained the validity of the patent in its review decision. Shandong Company filed an administrative lawsuit with the Beijing Intellectual Property Court. The first-instance court upheld the State Intellectual Property Office's invalidation review decision. Shandong Company appealed to the Supreme People's Court, which, after hearing the case, issued a second-instance judgment, revoking the State Intellectual Property Office's invalidation declaration review decision and the first-instance judgment, and ordering the State Intellectual Property Office to make a new review decision on the invalidation declaration request for this patent right.
II. Case Analysis
The key issue in this case lies in the judgment of creativity as stipulated in Article 22, paragraph 3 of the Patent Law. The specific issue belongs to differences in inventive concepts the possibility of combining different technical solutions, and then judging whether the target patent has creativity, which has certain typical significance.
Throughout the administrative review and administrative litigation, I have always believed that Comparative Document 1 provides different technical routes for crushing, shaping, bundling, and hydrolyzing corncobs, but it does not rule out the technical means of distinguishing features. Personnel in this field will not conclude that the distinguishing features are unhelpful in improving hydrolysis efficiency after reading Comparative Document 1. Without pursuing the technical goal of single-pass yield, personnel in this field can easily think of not using pressure-impregnation acidification complex processes, but using simple distinguishing technical means, namely the method of crushing and acidification. Comparative Document 1 will not hinder personnel in this field from associating the crushing of corncobs with direct acidification.
The appealed review decision of the State Intellectual Property Office determined that there are significant differences in the inventive concepts embodied in the technical solution of Example 3 of Comparative Document 1 and the technical solution of claim 1, leading to the use of different technical means to solve their respective technical problems. Although crushing raw materials is a conventional technical means in this field, personnel in this field would not think of introducing the step of crushing raw materials into this technical solution and adaptively adopting the process of directly immersing the crushed raw materials in dilute acid.
The Supreme People's Court held that the inventive concept generally refers to the technical improvement ideas proposed by the inventor to solve the technical problems faced. Even if there are certain differences in the inventive concept between the invention and the prior art, the impact on personnel in this field to obtain the technical solution of the invention should still be considered specifically. If there are clear technical implications in the prior art, and the so-called difference in inventive concept does not hinder personnel in this field from applying the distinguishing features to the closest technical solution to solve the technical problem actually solved by the invention, then the so-called difference in inventive concept cannot make the invention creative.
III. Case Result
The Supreme People's Court held that there are clear technical implications for the distinguishing feature of straw crushing in the prior art. Comparative Document 1 uses a non-crushing pressure-impregnation acidification method to solve the problem of high cost, which does not constitute a technical barrier to using the crushing method for direct acidification. Personnel in this field have the motivation to use traditional crushing and direct acidification methods based on Comparative Document 1 to obtain the technical solution protected by claim 1 of this patent. The appealed decision improperly determined the technical implications of this distinguishing feature. It is obvious for personnel in this field to obtain the technical solution of claim 1 based on Comparative Document 1 in combination with Comparative Document 2, Comparative Document 3, and common general knowledge. Claim 1 is not inventive. Therefore, the invalidation declaration review decision of the State Intellectual Property Office and the first-instance judgment of the Beijing Intellectual Property Court were revoked.
As the lawyer who handled this case throughout, this patent battle, which went through administrative review and two levels of administrative litigation, was not only a profound test of legal expertise, but also a valuable practical lesson. The victory in this case proves that in patent invalidation disputes, high-quality retrieval hits, precise targeting of the closest prior art, meticulous dissection of distinguishing technical features, and logically rigorous argumentation based on technical implications are the key to breaking through the impasse of the case.
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