If you or your company have developed a new technology, filing a patent application is an important step to protect your investment. However, because patent rights are territorial, it’s often necessary to file patent applications not only in the United States, but also globally.

In both the United States and China, two of the world's largest patent systems, the assessment of whether an invention is sufficiently innovative to warrant a patent differs significantly. In the U.S., an "obviousness" standard is used, while China applies an "inventive step" standard. Although similar in purpose, these standards differ in their application, interpretation, and legal framework, which must be considered when developing patent prosecution strategies.

In this article, we break down how the obviousness standard in the U.S. compares to the inventive step standard in China, providing practical insights to help you optimize your filings in both jurisdictions.

U.S. Obviousness Standard

In the U.S., the concept of obviousness is governed by 35 U.S.C. § 103, which states that a patent may not be granted if the differences between the claimed invention and prior art are such that the invention "would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art." The Supreme Court case Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) established the requirements for determining obviousness, which includes four key factors:

1. The scope and content of the prior art;
2. The differences between the claimed invention and the prior art; and
3. The level of ordinary skill in the relevant field; and
4. Secondary considerations such as commercial success, long-felt but unresolved needs, and failure of others.

Generally speaking, U.S. Examiners assess obviousness by reviewing prior art and determining whether a person of ordinary skill would have been motivated to combine existing references to arrive at the claimed invention. If such motivation exists and no secondary considerations suggest non-obviousness, the claim is rejected. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) later reaffirmed this process while establishing a looser standard of what Examiners must show to support a conclusion of obviousness.

Importantly, in the U.S. the above analysis is performed with the mindset of a person of ordinary skill before the filing date of the claimed invention. U.S. Examiners are specifically prohibited from relying on “hindsight” based on the patent application under examination with the Manual of Patent Examining Procedure (“MPEP”) stating that “impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.”

Chinese Inventive Step Standard

Chinese Examiners apply a multi-step test in determining whether the invention includes an inventive step:

1. Identifying the closest prior art;
2. Determining the distinguishing features of the invention and the technical problem solved by the invention; and
3. Determining whether a motivation exists to modify the prior art to arrive at the technical solution of the present invention.

In other words, Chinese Examiners first determine the differences between the claimed invention and the closest prior art and then determine the technical problem that is solved by these differences. The technical advantage provided by the invention must be based on the closest prior art. However, not surprisingly, if the Chinese Examiner identifies a technical problem solved in part 2, the Examiner is usually able to come up with a motivation to pursue a solution in part 3.

Conclusion

If you are considering pursuing patent protection in China, it’s often beneficial to proactively demonstrate the technical progress of the invention in the application itself by emphasizing performance improvements, efficiency gains, and other technical benefits. Further care should be made to indicate that the technical advantages of the invention are not based on the existing techniques or knowledge. During Examination, if the Examiner is unable to identify each enumerated technical advantage in step 2, you will be more successful in arguing that there is an inventive step.

Chinese Examiners have significant flexibility in determining what technical problems are addressed by an invention as well as whether there is a motivation to pursue the solutions to those problems. Due to the difference in standards, an invention which passes the obviousness standard in the U.S. may face more difficulty overcoming the inventive step analysis in China. However, an invention that appears obvious when combining prior art references by U.S. standards may still be patentable in China if it provides a significant technical improvement over the prior art. For example, if an invention optimizes an existing technology in a way that enhances efficiency or performance, a Chinese Examiner may consider it inventive even if a person of ordinary skill could theoretically combine prior art references to arrive at the improvement.

For patent applicants seeking protection in both the U.S. and China, understanding the difference in examination is crucial. Crafting claims and arguments that align with each country's approach can increase the likelihood of obtaining patent protection and avoiding unnecessary rejections.