JACKY WANG

According to Article 22, Paragraph 2 of the Patent Act, if an invention can be easily made by a person ordinarily skilled in the art (POSITA) based on prior art before filing, no invention patent should be granted for such invention, on the ground of lacking the so called “inventiveness.” In addition, according to Article 71, Paragraph 1, Item 1, any person may request an invalidation action against an invention patent where there is a violation of Article 22, Paragraph 2 of the Patent Act. Establishing the meaning of “a POSITA” is essential to objective determination of the inventiveness of an invention. However, in practice, the actual meaning of “a POSITA” is rarely discussed in a decision or verdict. In most cases, the differences between the patent at issue and the relevant prior art are discussed first. Then, when determining whether the patent at issue as a whole could be easily made, it is incidentally discussed whether the patent at issue could be easily made by a POSITA by referring to the relevant prior art and the knowledge at the time of filing, albeit without further defining or explaining the meaning of “a person ordinarily skilled in the art.” In this regard, the Supreme Administrative Court has, on several occasions, stressed the importance of establishing the meaning of “a person ordinarily skilled,” which was further reiterated in the administrative judgment from the Supreme Administrative Court No. 503 in 2016.

The abovementioned administrative judgment of the Supreme Administrative Court clearly expresses for the first time that there are numerous indefinite and fluid concepts in law, known as indefinite concepts of law existing in the essential constituents of administrative law. The indefinite concepts of law are general, universal, abstract, or polysemous and therefore inherently unclear. Prior to applying said essential constituents to concrete facts, these indefinite concepts of law should be explained and embodied. With respect to indefinite concepts of law in the patent legal system, in conventional technical fields or technical fields in which results are more predictable, the standard of “a POSITA” would be known upon the submission of the prior art. With regard to advanced technologies, technologies to be developed, staggered technologies or technical fields in which results are more difficult to anticipate, especially with regard to disputes between parties, the administrative authorities should explain the indefinite concepts of law first and then embody these concepts so that they may be applied. The administrative court shall also examine the legality of administrative acts in an administrative litigation. If a particular case can be subsumed into indefinite concepts of law, the administrative court is free to conduct a comprehensive examination on the legitimacy of the acts by the administrative agency.

The abovementioned administrative judgment of the Supreme Administrative Court is further directed to an oversight in the original administrative judgment. According to the Intellectual Property Case Adjudication Act, Article 34 applicable mutatis mutandis under Article 8 stipulates that any special professional knowledge already known to the administrative court should be disclosed to the parties, such that the parties are accorded an opportunity to present their arguments regarding such knowledge. Alternatively, the administrative court shall, whenever appropriate, provide its legal opinions and disclose moral convictions and after an oral argument, a judgment is made based on these moral convictions. In the original administrative judgment, after comparing the technical features of claim 1 of the patent at issue and evidence 1, it was confirmed that evidence 1 failed to clearly disclose its technical features in view of “a POSITA.” The patentee continued questioning the meaning of “a POSITA,” while the original administrative judgment failed to explain the technology level in view of a POSITA prior to the filing of the patent at issue. In the original administrative judgment, it is deemed that said technology could be easily made, which violates the law due to being groundless.

The abovementioned administrative judgment of the supreme administrative court further points out that the so-called “a POSITA,” based on general definition, refers to a virtual person who has ordinary skill in the art, and ordinary ability to carry out routine work and experimentation, and simultaneously understood and utilized the prior art before the application was filed. “Ordinary skill” refers to common ordinary knowledge containing known or commonly used information as well as information recited in text books or handbooks, or knowledge from experience. Said POSITA is a virtual person, rather than a patent examiner, a patent invalidation litigation judge, or a technical examination officer. The law provides that such a virtual person’s purpose is to exclude hindsight when examining the inventiveness. According to the foregoing definition, “a POSITA” is described by referring to “knowledge requirement” and “enablement requirement.” Knowledge requirement refers to “known ordinary knowledge containing known or commonly used information as well as information recited in text books or handbooks.” In addition, “ordinary ability to carry out routine work and experimentation” refers to the enablement requirement of a POSITA. However, the question remains whether during litigation there is any mechanism or assistant adjudicative agency capable of defining the enablement requirement of a POSITA at the time of filing. Furthermore, does the definition of the POSITA, as an essential constituent, relate to an interpretation of the law, or to facts which should be investigated involving burden of proof? If burden of proof is involved, what is the difference between the proof and the so-called “evidence of the prior art of citations”? Because of the wide scope, specifying the concept of “a POSITA” during actual litigation is indeed difficult. Nevertheless, it is very important to objectively judge  inventiveness by the establishment of this virtual person. In the future, when the Intellectual Property Court makes a judgment based on inventiveness, it is appropriate to establish the knowledge level of “a POSITA” in advance, based on the technical features addressed by the patent at issue, the problems encountered in prior art, the solution to the problem, the complexity of the technology and the level of practitioners.

In summary, in light of the administrative judgment from the Supreme Administrative Court No. 503 in 2016, it is clear that it is very important to establish the knowledge level of “a POSITA”, which will have a decisive influence on the resulting judgment. Indefinite concepts of law are inherently difficult to be completely specified. Nevertheless, during patent litigation, at least the parties involved may be accorded an opportunity to present their arguments; or alternatively, the court shall, whenever appropriate, provide its legal opinions and disclose moral conviction. By means of an oral argument, it is more possible to embody the essential constituent of “a POSITA.” The purpose of this judgment would be helpful for the parties involved to focus on the preparation of the oral argument, and should also facilitate the trial in court.


[1] http://www.taie.com.tw/db/download/epaper/epaper2016112414263119.pdf
(Last visit: March 21, 2017)