Determining inventive step


Candy K. Y. Chen and Crystal J. Chen

The inventive step of an invention always takes centre stage when prosecuting patent applications or enforcing patent rights in Taiwan.

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.