ELVAN YANG

An invention being (1) industrially applicable, (2) novel, and (3) inventive, from a substantive viewpoint, is considered patentable in Taiwan. These three requirements are generally called the three criteria of patentability and are respectively stipulated in Article 22, Paragraph 1 (the first part), Article 22, Paragraph 1 (the last part) and Article 22, Paragraph 2 of the Patent Act[1]. In the same way as in other countries, most disputes are in relation to the third criterion, i.e., the determination of inventiveness. In this article, the regulations, the examination guidelines for examiners, recent suits and our suggested strategy to argue for patentability, and in particular for inventiveness, are introduced.

Regulations Regarding Inventiveness

Article 22, Paragraph 2 of the Patent Act recites that “[a]n invention that is without the circumstances prescribed in the subparagraphs of the preceding paragraph but can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented.”

Who is this “person ordinarily skilled in the art” (POSITA)? Rule 14 of the Enforcement Rules of the Patent Act[2] further stipulates that the so-called “person ordinarily skilled in the art” in Article 22, Article 26, and Article 27 of the Act shall mean a person having general knowledge and ordinary skill in the art of the invention at the time of filing. That is all, and neither the Patent Act nor the associated Enforcement Rules provide any additional details further defining “general knowledge” and “ordinary skill.” In order to provide a reference for examiners to determine whether an invention is patentable, the Taiwan Intellectual Property Office (TIPO) publishes the Patent Examination Guidelines[3] (which were initially intended to be used by examiners), wherein the term “common general knowledge” is interchangeable with “general knowledge and ordinary skill” for international consistency.

Examination Guidelines Regarding Inventiveness

According to Part II, Chapter 3, Sections 2.2 and 3.2 of the Patent Examination Guidelines, whether an invention applying for a patent possesses novelty is generally examined after its industrial applicability is affirmed; and whether the invention possesses inventiveness should be examined after its novelty (including fictitious novelty) is affirmed. In other words, there is no need to examine the inventiveness if the invention is determined to lack novelty.

The Patent Examination Guidelines list the following five steps for the determination of inventiveness.
Determining the scope of the invention applying for a patent
Determining the contents disclosed in the relevant prior arts
Determining the skill level of a POSITA
Determining the difference between the invention and the relevant prior arts
A POSITA, by referring to contents disclosed in the relevant prior arts and based on the common general knowledge upon filing, determines whether the whole of the invention can be easily accomplished.

Step 5 might seem slightly confusing because of course it is actually the examiner rather than a POSITA who decides whether an invention has inventiveness, and therefore the examiner should assume the perspective of a POSITA during the examination. Of course, most disputes result from the POSITA in Steps 3 and 5.

Therefore, the Patent Examination Guidelines further request that attention should be paid to the following aspects.
Determination of inventiveness should be based on the invention as a whole, not only on individual aspects or part of the technical features.
The prior art and the invention are generally of the same or related technical field, and the problems to-be-solved are similar to each other and have common technical features; even if the technical fields of the two are different or irrelevant, the prior art can be identified as a relevant prior art as long as they have common technical features and can result in the effect of the invention.
Is there a motivation for a POSITA to combine the relevant prior arts based on the contents disclosed in the prior arts and the common general knowledge at the time of filing? In principle, the following examples should be considered regarding the prior arts and the invention. Lack of one element cannot be deemed a sufficient reason to state lack of motivation for the combination of prior arts.
The correlation in technical fields between the prior arts and the invention
If the relevant prior arts and the invention belong to the same or similar technical field, and the prior arts can solve the problem to-be-solved by the invention, the combination is generally obvious.
The correlation of the problems to-be-solved between the prior arts and the invention
If the problem to-be-solved by the invention will encourage a POSITA to combine the relevant prior arts, the combination is generally obvious.
The correlation in functions or effects between the prior arts and the invention
If the functions (or the effects) of the relevant prior arts and the invention are the same or similar, the combination is generally obvious.
The teachings or suggestions regarding the invention from the relevant prior arts
If the relevant prior arts have explicitly stated or substantively implied the teachings or suggestions of the invention, the combination is generally obvious.

Please note that there is no example of “how” to combine the prior arts mentioned in the Patent Examination Guidelines. As a result, many Office Actions lack an explanation of how the prior arts are combined, and examination opinions in Taiwan sometimes may be rather subjective. Therefore, the Administrative Litigation Case Compilation of Patents 103~104 (2014~2015)[4] published by the TIPO emphasizes that a “[d]ecision … must include the reasons why and how the evidence items are combined” (Page 129).

Recent Suits Regarding Inventiveness

Even though the TIPO deems that a decision should include the reasons why and how the evidence items are combined, still Office Actions or defenses can be found which did not (negligently or deliberately) follow the abovementioned guideline.

Intellectual Property Court 104 Xing-Zhuan-Su No. 24 (2015) (Patent No. M328034)

Is the combination of Evidence 1 and Evidence 2 sufficient to demonstrate that Claim 5 is not inventive?
Judge’s opinion: The data transfer protocol is a common standard format for transferring data between two devices. Evidence 2 disclosed that the USB mouse 220 outputs the movement coordinates to the computer 200 via the microprocessor 222 (corresponding to the interface device). Since the USB mouse 220 and the computer 200 are two separate devices, it is necessary to transfer the electronic data between the USB mouse 220 and the computer 200 using an interface device according to the USB transfer protocol. However, the mobile communication terminal disclosed in Evidence 1, Figs. 18 and 21 is a single device, wherein no use of a data transfer protocol for the transmission of electronic data inside the mobile communication terminal is required. A POSITA has no motivation to combine Evidence 1 and Evidence 2.

Actually, the TIPO failed to explain how a “two discrete devices” prior art can be combined with another “one integrated device” prior art, since basically, their implementations technically teach away from each other.

Intellectual Property Court 105 Xing-Zhuan-Su No. 24 (2016) (Patent No. M367249)

Can the combination of Evidence 1 and Evidence 2 prove that Claim 6 is not inventive?
Plaintiff’s plaint: Evidence 1 has taught that “the counterweight is threaded in the opening without protruding from the top edge of the ring wall so as to avoid wind shear affecting the rotation of the fan,” so the additional counterweight makes the opening of the top wall of the fan become flat. The “separator” of Claim 6 has the same effect as the “counterweight” of Evidence 1, and can be easily accomplished by a POSITA.
Judge’s opinion: The main purpose of the counterweight of Evidence 1 is to balance the weight of the fan. Being configured to be aligned with the top edge of the ring wall has the effect of avoiding wind shear effect; however this is still different from the intended purpose of the technical means of configuring the “separator” of the invention. The “separator” attached to the outer surface of the balance area can completely and effectively avoid that the recess(es) formed after the balance operation affect the aerodynamic characteristics of the fan. The counterweight of Evidence 1 is only arranged in one or more of the openings and thus cannot avoid the wind shear effect.

In fact, in the plaint the plaintiff fails to explain how the counterweight of Evidence 1 can be combined with common general knowledge to result in the effect of the “balance area” and “separator” because the purpose of the counterweight of Evidence 1 is to increase the weight but the function of the “balance area” and “separator” of the invention is to reduce the weight. In other words, their implementations technically teach away from each other.

Strategy for An Argument

Based on the preceding observation and analysis, we suggest a simple but useful “5W1H strategy” for checking the integrity of rejection reasons in an Office Action from the TIPO to avoid an unnecessary rejection as well as time- and money-consuming remedies in the future.

Who: a POSITA or some POSITAs (no arguments directly for this step)
When: all the cited references must be published before the filing date (or the priority date)
Where: the technical fields of all the cited references must be correlated; otherwise, the cited references must have common technical feature(s) (referring to Section II)
What: similar to the “all elements” rule (all technical features must be disclosed in the cited reference(s) except for those agreed to be common general knowledge)
Why: motivation (starting from the first cited reference and then considering why a POSITA could find the other cited reference and vice versa without recognizing the problem to-be-solved)
How: a combination of the cited references must be reasonable and implementable

In this regard it is worth to keep in mind that the why and how steps adopting “teach away” examples are powerful tools to contravene the rejection from the examiner.