Determining the presence of an inventive step or non-obviousness of an invention is an important requirement for obtaining a patent as it ensures that the invention is not simply a combination of existing techniques, but is a new and innovative solution to a problem. According to Article 22, Paragraph 2 of the Taiwan Patent Act, if an invention can be easily made by a person having ordinary skill in the art (PHOSITA) based on prior art before filing, no invention patent should be granted for such invention on the ground of lacking an “inventive step.” If technical contents in multiple citations are referenced, the determination of the inventive step of an invention shall be based on the motivation to combine the contents of these citations. This approach is often used by patent examiners or judges to determine the presence of an inventive step of a claimed invention. When assessing whether a PHOSITA would be motivated to combine multiple prior arts so as to accomplish a claimed invention, based on the Patent Examination Guidelines1, the relation or similarity between the technical contents of multiple citations, rather than the relation or similarity between the technical contents of the citations and the technical contents of the claimed invention, should be taken into consideration to prevent hindsight. In principle, the following four factors are typically taken into consideration:
1. Relation of Technical Fields: whether the technical fields of the technical contents of multiple citations are identical or relevant;
2. Commonality of Problems to be Solved;
3. Commonality of Operations or Functions; and
4. Teachings or Suggestions.
The judgment of the Supreme Administrative Court (SAC) 2018 Pan Zi No. 6472 expounded some of the relationships among the foregoing factors. In this judgment, the SAC clearly pointed out that the factor “Commonality of Operations or Functions” shall not rely only on the operations and functions of the "common structure" of the evidence, but should also consider the operations and functions of the "overall structure" of the mechanisms. With respect to the factor “Commonality of Problems to be Solved," by citing the content of the Patent Examination Guidelines, the SAC explained that mere "relevance" of the problems solved by multiple citations is not sufficient to establish motivation for combination; the problems solved by these multiple citations shall be “substantially the same.” Accordingly, it will be more difficult for patent examiners and petitioners of invalidation actions to challenge the inventive step of a claimed invention by combining multiple citations.
In another judgment of the SAC 2019 Shane Zi No. 4633 rendered on January 18, 2023, the court pointed out that to determine whether a PHOSITA would be motivated to combine the technical contents of multiple citations, the relevance or commonality of the technical contents of these citations should be considered. In this regard, the relevance of technical contents is judged based on whether the technical contents disclosed in plural prior art references belong to the same or related technical fields, and the relevance of citations in dissimilar technical fields may be different. It is therefore difficult to directly determine whether a PHOSITA would be motivated to combine multiple citations, and it is necessary to further consider whether the technical contents of the multiple citations address substantially the same problems to be solved or substantially perform the same functions and whether there are teachings or suggestions for combination, so as to comprehensively judge whether a PHOSITA would actually be motivated to combine these citations.
For the factor “Relation of Technical Fields,” one may refer to the judgment of the Intellectual Property and Commercial Court 2021 Xing Juan Hsu Zi No. 154. In this case, the primary issue was whether a PHOSITA would be motivated to combine the technical contents in citations in very different technical fields, i.e., whether a PHOSITA would be motivated to incorporate techniques relating to washing machines and electric kettles into an etching machine used in the semiconductor industry. In the judgment, the court held that a PHOSITA would indeed be motivated to combine the technical contents in such citations if the “Commonality of Problems to be Solved” and “Commonality of Operations or Functions” can be established.
In view of the foregoing, the assessment of the inventive step of an invention is heavily focused on the establishment of the factors “Commonality of Problems to be Solved” and “Commonality of Operations or Functions.” Once the “Commonality of Problems to be Solved” and “Commonality of Operations or Functions” of multiple citations are confirmed, the motivation to combine citations in different technical fields can be established. When the inventive step of a claimed invention is challenged based on a combination of multiple citations, a successful strategy may be arguing the lack of “Commonality of Problems to be Solved” and “Commonality of Operations or Functions” of the citations. On the contrary, an invalidation petitioner may try to establish “Commonality of Problems to be Solved” and “Commonality of Operations or Functions” of the citations.
[1] Section 3 “Inventive Step” of Chapter 3, Patent Examination Guidelines published by the Taiwan Intellectual Property Office in 2022, pages 2-3-18~2-3-21.
[2] The Supreme Administrative Court 2019 Shane Zi No. 463 administrative judgment.
[3] The Supreme Administrative Court 2018 Pan Zi No. 647 administrative judgment.
[4] The Intellectual Property and Commercial Court 2021 Xing Juan Hsu Zi No. 15 administrative judgment.
*Patent Attorney, Assistant Manager of International Patent Division at Tai E International Patent & Law Office
