As discussed in our previous articles, in recent years, the Supreme Court and the Supreme Administrative Court repeatedly remanded issues concerning the determination of inventive step for a programmable controller patent to the Intellectual Property and Commercial Court (the “IPC Court”) for further proceedings.
These appellate decisions identified several recurring issues in assessing inventive step. In particular, they emphasized: (i) the need to properly define the “primary reference”; (ii) the importance of determining the level of ordinary skill in the art at the time of the patent application; (iii) the distinction, under the “could-would” approach, between a motivation to attempt and a motivation to implement when assessing whether a skilled person would combine prior art; and (iv) whether patent licensing to competitors may serve as evidence of commercial success supporting inventive step.
At the end of December 2025, the IPC Court rendered the civil judgment (2024 Min Zhuan Shang Geng Er Zi No.5) and administrative judgment (2025 Xing Zhuan Geng Er Zi No.1) after the second remand in this series of cases. The reasoning in these two judgments is similar, and both decisions synthesize and apply the remand guidance set forth in the foregoing appellate judgments.
In particular, with respect to the level of skill in the art at the time of the patent application, the IPC Court adopted the written submissions and in-court testimony of the defendant’s expert witness as the basis for its subsequent inventive step determination. In assessing inventive step in a combination prior art case, the IPC Court first identified the primary and secondary references, compared the technical features of the patent-in-suit with those of the primary reference, and determined that the differences were disclosed in the secondary reference. With respect to the motivation to combine the references, the IPC Court found that the references were related in terms of technical field and shared common problems addressed, functions, or purposes, and further held that a person having ordinary skill in the art could, based on the technical contents of the primary reference, program the control device, and therefore would have been motivated to adopt the technology disclosed in the secondary reference under specific conditions, rather than merely relying on hindsight to suggest a motivation to try combining prior art references. Accordingly, the IPC Court again concluded that the patent lacked inventive step.
As to whether the patentee’s licensing constitutes commercial success, the IPC Court, in the remand proceedings of both the civil and the administrative actions, not only reviewed the license agreements at the time but also, after formulating questions with the parties, sent inquiries to the licensees of the patent-in-suit. The IPC Court’s inquiries focused on the reasons why the licensees obtained licenses at the relevant time, including what technical problems existed at the time of the patent application, whether the technical content of the patent claims could resolve those problems, and whether the license agreements were entered into based on the technical content of the claims. Most of the licensees responded that, due to the passage of time, they were no longer able to recall the relevant circumstances, and although some of the remaining licensees affirmatively indicated that the patent could resolve the technical problems at the time, it still could not be confirmed whether the licensing at that time was based on the technical content of the patent. Consequently, the IPC Court held that the license agreements at the time could not establish that the licensees obtained licenses based on the technical features of the claims, and therefore determined that the patentee failed to prove a direct nexus between the patent licensing and the technical features of the patent.
In sum, the Supreme Court and the Supreme Administrative Court have repeatedly indicated in their judgments that lower courts should pay attention to defining the “primary reference,” considering the level of skill in the art at the time of the patent application, applying the “could-would” approach to determine the motivation to combine, and taking into account the factor of commercial success. These considerations, which frequently appear as grounds for remand in appellate court decisions on patent inventive step, have now become the items of checklist for the IPC Court in recent examinations of patent inventive step, and are also worth preparing for in advance and properly addressing by parties in litigation disputing patent validity.