In November 2019, the China National Intellectual Property Agency (CNIPA) issued new patent examination guidelines for applying China’s “inventive step” requirement, the patentability standard roughly equivalent to the U.S. patent requirement of “nonobviousness.” Chinese Patent Law defines “inventive step” such that the invention has a prominent substantive feature and represents notable progress. See Patent Law of the People’s Republic of China, Laws Regulations (Aug. 25, 2014), Under the new guidelines, inventive step can be determined as a whole from a perspective of “invention concept.”

Regarding “inventive step,” a three-step test has been predominantly used by Chinese examiners that includes: determining the closest prior art reference; determining distinguishing technical feature(s) of the invention and technical problems actually solved by the invention; determining whether the invention is obvious to a person having ordinary skill in the art. This three-step test is similar to the Graham v. John Deere Graham v. John Deere Co., 383 U.S. 1 (1966). criteria used to evaluate obviousness for U.S. patent claims. However, the three-step test has an inherent defect that Chinese examiners often split a claimed invention into multiple technical features and accordingly compare the technical features, one by one, with corresponding features from a prior art reference, thereby destroying the integrity of the claimed invention. Although there was certain language in the prior examination guidelines to prevent examiners from destroying invention integrity, in practice, Chinese examiners would erroneously reject many patent applications that should have been allowable. CNIPA was aware of this inherent defect of the three-step test and issued the new guidelines on Nov. 1, 2019.