Case sheds light on assessing the inventiveness of solving a technical problem

On 27 September 2019 the IP Court of the Supreme People’s Court handed down Judgment (2019) Zui Gao Fa Zhi Xing Zhong (32), confirming the validity of a utility model patent titled “Photovoltaic module and automatic cleaning device thereof” (ZL201520439003.5). This case was chosen as exemplary by the Supreme Court on 16 April 2020 and selected as one of 36 exemplary cases concluded by the IP Court in 2019 because it provides clarity on determining a technical problem actually solved in an inventiveness assessment.

Facts

On 30 January 2018 Shandong HAOWO Electronic Co Ltd (HAOWO) filed an invalidation request before the Patent Reexamination Board against the utility model patent owned by Kashi BOSI Photovoltaic Technology Co Ltd (BOSI).

On 24 July 2018 the Patent Reexamination Board issued its decision, in which it maintained the validity of the utility model patent and held that the first claim involved an inventive step over the combination of the prior art, namely, D1 (CN203987878U), D2 (CN203417873U) and common knowledge D3 (CN1605313A)/D5 (W02014/185082A1).

HAOWO filed an administrative lawsuit before the Beijing IP Court. On 29 January 2019 the Beijing IP Court handed down Judgment Jing 73 Xing Chu No 9181 (2018) in which it revoked the decision, finding that the utility model patent was not inventive over the combination of the prior art, namely D1, D2 and D3/D5.

The Patent Reexamination Board and BOSI then filed an appeal against this first-instance judgment before the IP Court. On 27 September 2019 the Supreme People’s Court ruled that the decision was not only clear in its facts but also correct in its application of the law, and thereby revoked the first-instance judgment. The validity of the utility model patent was eventually confirmed by the IP Court.

Court holds

The IP Court held that in assessing inventiveness, the technical problem actually solved by this invention should be determined based on its role, function or technical effect of the distinguishing technical features. The technical problem actually solved cannot be overly generalised, as this underestimates the inventiveness of the work. On the other hand, it cannot it be simply equated to the role, function or technical effect of the distinguishing technical features as this overestimates the inventiveness of the work. Therefore, in order to determine the technical problem actually solved, a proper generalisation should be made on the basis of the actual role, function or technical effect of the distinguishing technical features.

Although the IP Court found that the Patent Reexamination Board did not properly generalise the technical problem actually solved (ie, how to make the automatic cleaning device move along photovoltaic panels to be cleaned without being jammed by the uneven edges of panels) the lapse did not directly affect the assessment of inventiveness. The court held that the first-instance judgment had overly generalised the technical problem actually solved (ie, how to ensure the cleaning device move normally). The IP Court added that those skilled in the art are generally aware of the fact that many factors may affect the device’s ability to clean photovoltaic panels, such as:

• its walking or driving unit;
• unevenness caused by the change of width in photovoltaic panels within a certain range; and
• the effect of terrain on the varying height of photovoltaic panels or even the cleaning unit itself.

Each problem may correspond to a different solution. Over-generalising the technical problem actually solved will therefore lead to an erroneous assessment of inventiveness. Based on this reasoning, the IP Court ruled to overturn the first-instance judgment.

Comment

The Guideline of Examination (2001) introduced for the first time the so-called three-step approach for assessing inventiveness, wherein determining the technical problem actually solved is an essential part of the second step. The guideline set out that the technical problem actually solved should be determined based on the technical effects of the distinguishing technical features. However, in the absence of detailed criteria, determination of the technical problem actually solved could be subjective or even arbitrary in practice.

It is therefore to be welcomed that the IP Court has established a practical rule to determine the technical problem actually solved in this case. It did not elaborate on the extent to which generalisation is deemed proper and it is hoped that this will be clarified in future judicial practice.