In China, innovative drug companies typically rely on their initial composition of matter patents to block out competitors. Other “follow-on” IP, such as those directed towards formulations, polymorphs, and salt forms, are often regarded as less likely to survive invalidation challenges, especially in China where the standard of “person skilled in the art” is so high. Having said that, we share below today a positive counter example case in which a salt form of a JAK inhibitor survived invalidation. This case is one of CNIPA’s Top Ten Patent Re-examination and Invalidation Cases for 2024 (published in the 2025 list). These cases are meant to be guiding cases, showcasing exemplary real-world…
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- China, China Patent Office, CNIPA, Conflicting Application, Patent, Patent Re-examination and Invalidation Department
The Secret Prior Art Trap: A Case Study on Conflicting Applications in China
In patent prosecution, the concept of a “conflicting application” or “secret prior art” plays a critical role in determining the patentability of an invention. This article explores the framework for assessing conflicting applications under Chinese patent law, with a comparative perspective on the approaches adopted in the United States. Case Background: The Image Encoding Dispute The subject of the appeal was a patent application for an image encoding technology, filed on June 5, 2019. The applicant had not claimed any priority. The CNIPA Examiner had issued a Final Rejection, asserting that the application lacked novelty in light of two prior PCT international applications: The applicant appealed this decision, leading to…
- AI, China, China Patent Office, CNIPA, Inventions, Inventiveness, Patent, Patent Re-examination and Invalidation Department, Patent Re-examination Board, Top 10 IP Case
From Faces to Football Fields: How Applying AI Models to Different Application Fields Can Prove Inventive in China
As AI models become versatile and adaptable across multiple contexts and industries, questions about inventive step sit at the heart of patent examination in China. The 2023 Patent Examination Guidelines (hereinafter referred to as ‘the Guidelines’) included several sessions dedicated to explaining how inventive step should be examined for AI-related inventions, featuring examples related to AI algorithms, big data, and user experience1. In the re-examination of Beijing ByteDance Network Technology Co. Ltd.’s application entitled “Method and apparatus for processing an image” (Application No. 201810734681.2)2, which was recognized as one of the Top 10 Re-examination Cases of 2025 by the CNIPA, the CNIPA focused on the following issue: when an existing…
