*AI-generated translation, for reference only.

[Keywords]

Administrative; Reexamination of the Rejection of an Invention Patent Application; Novelty; Use Invention of a Known Chemical Product; Technical Effect

[Case Facts]

Xu [REDACTED] is the patent applicant of the invention patent application with application number 201611021737.7, titled "A Residue-Reduction Method for Shortening the Half-life and/or Complete Degradation Time of Residual Pesticides." On November 8, 2018, the China National Intellectual Property Administration (CNIPA), after examination by its original examination department, decided to reject the application. Dissatisfied with the rejection decision, Xu [REDACTED] filed a request for reexamination with CNIPA. In response, CNIPA, on July 27, 2020, rendered the No. 221525 Decision on the Examination of the Reexamination Request, holding that Claims 1–3 of the application do not possess the novelty required by Article 22, Paragraph 2 of the Patent Law relative to Prior Art Document 1, and that Claims 4–10 do not possess the inventive step required by Article 22, Paragraph 3 of the Patent Law, and upholding the rejection decision made by CNIPA. Dissatisfied, Xu [REDACTED] filed a lawsuit with the Beijing Intellectual Property Court, requesting revocation of the Contested Decision and an order directing CNIPA to make a new decision.

The Beijing Intellectual Property Court, on August 29, 2022, rendered Administrative Judgment (2020) Jing 73 Xing Chu No. 13452, dismissing the claims of Xu [REDACTED]. Xu [REDACTED] filed an appeal, and the Supreme People's Court, on December 7, 2023, rendered (2022) SPC IP Admin. Final 788: the appeal is dismissed, and the original judgment is upheld.

[Judge's Opinion]

The legally effective judgment of the Court holds that, with respect to a use invention of a known chemical product, if a new use of a known product is itself an invention, then the known product cannot destroy the novelty of that new use. Such a use invention belongs to the category of method-of-use inventions, because the essence of the invention lies not in the product itself but in how it is used. Conversely, if the so-called new use of the known product for which protection is sought merely describes a technical effect that was not explicitly disclosed before the filing date but that a person skilled in the art was already able to ascertain, or merely describes from a different perspective, or verifies by a different verification method, a technical effect that was already ascertainable before the filing date, then it does not itself constitute an invention and does not possess novelty relative to the prior art.

In this case, the specification of the present application expressly records that the present application is intended to effectively reduce and eliminate pesticide residues in agricultural products, which is no different from the use of Prior Art Document 1. The "half-life and/or complete degradation time of residual pesticide in the crop" referred to in the present application, compared with the residue amount in crops 14 days after pesticide application as disclosed in Prior Art Document 1, has a direct positive correlation between the two; it merely verifies, from a different perspective and by different methods and parameters, the effect of the same product in removing pesticide residues. Where the product compositions are completely identical, even if the present application verifies the half-life and/or complete degradation time of residual pesticide in the crop, it does not thereby acquire a new use by virtue of such a limitation. Moreover, although the application method numbered 1.12 in Table 1 of Prior Art Document 1 is a comparative example, this does not mean that the technical effect of reducing pesticide residues, characterized in the present application by the half-life and/or complete degradation time of the pesticide, is improved over the technical effect of reducing pesticide residues of that comparative example. In addition, where the composition, proportion, use, and effect of the mixture have all been disclosed, discovering and verifying the specific role played by the synergistic adjuvant therein does not constitute producing a new use and therefore likewise does not affect the assessment of novelty. Accordingly, the technical solution of Claim 1 of the present application does not possess novelty.

[Judgment Digest]

Where the new use defined by a use-invention patent for a known chemical product merely describes from a different perspective, or verifies by a different method, a technical effect of the chemical product that a person skilled in the art was already able to ascertain before the filing date, such a so-called new use does not constitute a distinguishing technical feature between the patent and the prior art.

[Related Index]

Article 22, Paragraph 2 of the Patent Law of the People's Republic of China (this case applies Article 22, Paragraph 2 of the Patent Law of the People's Republic of China, which took effect on October 1, 2009)

First instance: Beijing Intellectual Property Court, Administrative Judgment (2020) Jing 73 Xing Chu No. 13452 (August 29, 2022)

Second instance: Supreme People's Court, (2022) SPC IP Admin. Final 788 (December 7, 2023)