Determining inventive step

Article 22 of the Patent Act provides that, where an invention can be easily made by a person having ordinary skill in the art (PHOSITA) based on prior art, no invention patent shall be granted, notwithstanding the other requirements of patentability. From a literal interpretation of the provision, when an invention filed for a patent can be easily accomplished by a PHOSITA based on the prior art before filing, the invention will be regarded as lacking an inventive step over the prior art, even though it may be novel.

To facilitate the determination of inventive step, the Patent Examination Guidelines specify five steps: (1) determining the scope of an invention for which a patent application has been filed; (2) determining the contents disclosed by related prior art; (3) determining the technical level of a PHOSITA of the invention; (4) determining the difference(s) between the invention and the relevant prior art; and (5) determining whether the invention may be readily accomplished by a PHOSITA by referring to the contents disclosed in the relevant prior art, and by using common knowledge when the application is filed.

Whether the cited references teach or disclose the “technical features” of the patent at issue is what the Taiwan IP Office or the courts actually consider.

In addition to this five-pronged test, secondary factors should also be taken into consideration, as long as the applicant or right holder can provide auxiliary proof for support. The secondary factors include whether the invention (a) has an unexpected efficacy; (b) solves a long-existing problem; (c) overcomes technical scepticism; or (d) has achieved commercial success.

The courts rarely mention aspects of the five-pronged test suggested in the examination guidelines, and instead rely heavily on a literal interpretation of Article 22 of the Patent Act. In practice, adjudication typically involves a determination as to whether a PHOSITA may accomplish the invention through combining, modifying, replacing, or converting the techniques based on the prior art disclosed by one or more cited documents and with reference to common knowledge.

Therefore, whether the cited references teach or disclose the “technical features” of the patent at issue is what the Taiwan IP Office or the courts actually consider. It is commonly seen that if all features of the invention at issue can be found in the prior art, examiners and courts will reach a quick determination that a combination of such features is easily accomplished by a PHOSITA, deeming the invention to lack inventive step. The current controlling test for determination of inventive step is thus relatively subjective and disadvantageous to inventors and patent right holders.

Patent disputes

According to statistics from January 2008 to March 2012, 152 patent disputes concerning the issue of inventive step have been appealed to the Supreme Administrative Court, including rejections of patent applications and patent invalidations. Among these 152 appealed cases, 31 judgments ruling that the inventions at issue had an inventive step were sustained, and 100 judgments ruling that the inventions at issue lacked an inventive step were sustained. Moreover, eight judgments confirming that the inventions at issue had an inventive step were overruled, and 13 judgments determining that the inventions at issue lacked an inventive step were overruled.

These statistics demonstrate the vulnerability of inventive step under the scrutiny of a technical feature comparison. Just 44 out of 152 patents survived from the issue of lacking an inventive step in the administrative remedial procedures.

Under the stringent scrutiny of inventive step, an “unexpected efficacy of an invention”, or “any new purpose of use attained from an invention” will help in making a persuasive argument against the determination of “lacking an inventive step”. According to the guidelines, an invention will be deemed to possess an inventive step if “unexpected efficacy of an invention”, or “any new purpose of use attained from an invention” can be obtained, whether or not the technical features of the invention are known prior art.

Hence, to avoid a situation in which a patent becomes vulnerable under a challenge of inventive step, we recommend that applicants always specify in the application the unexpected efficacy of an invention, or any new purpose of use attained from an invention.

Candy K. Y. Chen is a patent attorney and managing partner at Tsai Lee & Chen. She can be contacted at: ckchen@tsailee.com.tw

Crystal J. Chen is an attorney at law and partner at Tsai Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw