August 2017
Although the examination of inventive steps may be conducted by determining a combination of invalidation evidence, still it should be considered if such combination is obvious to persons with ordinary skills in the art associated with the invention(Taiwan)
Luke Hung
The Supreme Administrative Court rendered the 105-Pan-298 Decision of June 8, 2016 (hereinafter, the "Decision"), holding that although the examination of inventive steps may be conducted by determining a combination of invalidation evidence, still it should be considered if such combination is obvious to persons with ordinary skills in the art associated with the invention.
According to the facts underlying this Decision, Entity A, who was not a party to this lawsuit, had previously applied to the Appellee for an invention patent and had been granted the patent-in-suit after the Appellee's examination. The patent-in-suit was subsequently assigned to the Appellant. The Intervenor filed invalidation against the patent-in-suit for its failure to satisfy the criteria for an invention patent in violation of Article 22, Paragraph 4 of the Patent Law effective at the time of grant. The Appellee rendered a disposition after its examination that "the invalidation against Claims 1 and 2 is valid and thus these claims should be canceled, while the invalidation against Claims 3 and 4 was not valid." The Appellant brought this administrative action against the portion that states "the invalidation against Claims 1 and 2 is valid and thus these claims should be canceled" pursuant to applicable procedures.
According to the Decision, inventive steps may be examined by considering a combination of invalidation evidence. However, it should be considered if the combination is obvious to persons with ordinary skills in the art associated with such invention.
It was further held in the Decision that the original decision has already explained that the patent-in-suit seeks to resolve the following issue: "The gas detector of the prior-art enclosed air supply equipment was installed in pipelines and thus could not accurately ascertain the concentration of gases." When persons with ordinary skills in the art seeks to resolve this issue, they should have adequate motivations based on the above explanation and easily accomplish the invention at issue by putting together the technical details disclosed in Evidence 2 and Evidence 3 and considering the general knowledge at the time of application. Therefore, since the finding of the original trial court that Claims 1 and 2 of the patent-in-suit do not have inventive steps was not erroneous, and the Appellant's appeal was rejected.
The Supreme Administrative Court rendered the 105-Pan-298 Decision of June 8, 2016 (hereinafter, the "Decision"), holding that although the examination of inventive steps may be conducted by determining a combination of invalidation evidence, still it should be considered if such combination is obvious to persons with ordinary skills in the art associated with the invention.
According to the facts underlying this Decision, Entity A, who was not a party to this lawsuit, had previously applied to the Appellee for an invention patent and had been granted the patent-in-suit after the Appellee's examination. The patent-in-suit was subsequently assigned to the Appellant. The Intervenor filed invalidation against the patent-in-suit for its failure to satisfy the criteria for an invention patent in violation of Article 22, Paragraph 4 of the Patent Law effective at the time of grant. The Appellee rendered a disposition after its examination that "the invalidation against Claims 1 and 2 is valid and thus these claims should be canceled, while the invalidation against Claims 3 and 4 was not valid." The Appellant brought this administrative action against the portion that states "the invalidation against Claims 1 and 2 is valid and thus these claims should be canceled" pursuant to applicable procedures.
According to the Decision, inventive steps may be examined by considering a combination of invalidation evidence. However, it should be considered if the combination is obvious to persons with ordinary skills in the art associated with such invention.
It was further held in the Decision that the original decision has already explained that the patent-in-suit seeks to resolve the following issue: "The gas detector of the prior-art enclosed air supply equipment was installed in pipelines and thus could not accurately ascertain the concentration of gases." When persons with ordinary skills in the art seeks to resolve this issue, they should have adequate motivations based on the above explanation and easily accomplish the invention at issue by putting together the technical details disclosed in Evidence 2 and Evidence 3 and considering the general knowledge at the time of application. Therefore, since the finding of the original trial court that Claims 1 and 2 of the patent-in-suit do not have inventive steps was not erroneous, and the Appellant's appeal was rejected.
