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 an “inventive step.” According to Article 120 of the Patent Act, Article 22 shall apply mutatis mutandis to utility model patent. In addition, according to Article 119, Paragraph 1, Item 1 of the Patent Act, any person may request for an invalidation action against a utility model patent with the Specific Patent Agency where there is a violation of Article 22 applicable mutatis mutandis under Article 120.
Determining whether a claimed invention involves an inventive step is crucial when assessing patentability. The Patent Examination Guidelines issued by the Specific Patent Agency further describe the steps for determining whether a claimed invention involves an inventive step. Determination of whether a claimed invention involves an inventive step should be made according to the following five steps: step 1: determining the scope of a claimed invention; step 2: determining the contents disclosed in relevant prior art; step 3: determining the technical levels of a POSITA; step 4: determining the differences between the claimed invention and the relevant prior art; and step 5: determining whether a POSITA can easily accomplish the claimed invention based on the contents disclosed in relevant prior art and common general knowledge at the time of filing. Determination of whether a claimed invention involves an inventive step under step 5 includes factors negating and factors affirming an inventive step in which the latter further include auxiliary factors, among which the most abstract factor is achieving “commercial success.” For the specific connotation of this factor, one may refer to the judgment of the Supreme Administrative Court 2020 Shang Zi No. 575 and the judgment of the Supreme Administrative Court 2018 Pan Zi No. 652.
The abovementioned judgments of the Supreme Administrative Court clearly point out that in determining whether a claimed invention involves an inventive step, the scope of a claimed invention has to be determined first, followed by the differences between the claimed invention and the relevant prior art and whether a POSITA could easily accomplish the claimed invention based on the contents disclosed in the relevant prior art and common general knowledge at the time of filing, wherein "commercial success" is merely one of the auxiliary factors. In addition to the technical features of a patented product, whether the product could achieve commercial success is decided by relevant factors such as sales strategies, advertising, market supply and demand, and overall social and economic prosperity. If an applicant aims to overcome the inventive step issue based on commercial success, in addition to proving that the sales volume of the patented product is higher than that of similar products or that the patented product has monopolized or replaced a competitor's product in the market, the applicant bears the burden of proof to establish that the commercial success of the patented product is actually based on its technical features.
With regard to which factors are primarily considered in determination of an inventive step, commercial success is only an auxiliary judgment factor, i.e., a supplementary reference only, one may refer to the judgment of the Intellectual Property and Commercial Court 2022 Min Zhuan Shang Zi No. 4. In this judgment, the patentee claimed damages for patent infringement, but the alleged infringer argued that the patent at issue was invalid. In order to defend the inventive step of the patent at issue, in addition to comparing the differences between the citations and the patent at issue, the patentee also provided a test report on the patented product as evidence of unexpected effects and commercial success. However, the judgment held that since the combined disclosures of the citations provided by the alleged infringer were sufficient to prove that the patent at issue did not have an inventive step, "commercial success" as an auxiliary judgment factor was no longer necessary to be considered. Therefore, the patentee's arguments were not accepted.
In summary, when the inventive step of a patent is challenged, the patentee should devote time and resources to the comparative analysis with the prior art references or overcome the inventive step issue through post-grant amendments. As for auxiliary judgment factors, regardless of the requirements of proof or their pertinence for establishing an inventive step, they are less useful and patentees should be cautious when attempting to rely on such factors.
Reference: https://www.taie.com.tw/big5/news306.c.pdf (Last visit: November 10, 2022)
*Assistant Manager of International Patent Division at Tai E International Patent & Law Office
