Luke Hung
The Supreme Administrative Court rendered the 108-Pan-420 Decision of August 23, 2019 (hereinafter, the “Decision”), holding that although an invention is not subject to any of the circumstances in Article 22, Paragraph 1 of the Patent Law, still if the associated technology can be easily completed by person having ordinary skills in the art based on prior art, an invention patent shall not be granted.
According to the facts underlying this Decision, the Appellant applied to the Appellee for an invention patent for “wearable light activity recording devices” (hereinafter, the “Case at Issue”) on July 1, 2014. After the Appellee’s examination, an office action was issued. After amended claims were filed by the Appellant and a reply was issued, the Appellee held that this did not conform to Article 22, Paragraph 2 of the Patent Law and issued a decision of refusal to reject the patent application. Dissatisfied, the Appellant applied for reexamination. The Appellee subsequently issued a reexamination decision of refusal as a disposition to reject the patent application. Dissatisfied with the original disposition, the Appellant brought an administrative action with the Intellectual Property Court pursuant to applicable procedures.
According to the Decision, Article 22, Paragraph 2 of the Patent Law specifically provides that although an invention is not subject to any of the circumstances in Article 22, Paragraph 1 of the Patent Law, still if the invention can be easily accomplished by person having ordinary skills in the art based on prior art, an invention patent still shall not be granted. To determine inventive steps, the entirety or part of the technical details of multiple cited references may be combined, or parts of the technical details of a single cited reference may be combined, or the technical details of cited references may be combined with publicly disclosed prior art to determine if the patented invention or creation can be easily accomplished. To determine if person having ordinary skills in the art of the invention have motivations to combine the technical contents of a plurality of cited references, it is necessary to consider factors such as the connections, if any, between the technical fields associated with the plurality of cited references, the technical issues that they seek to resolve, the commonalities, if any, of the functions and efficacies created by the technical contents, and the teachings or recommendations concerning if the technical contents of relevant cited references have clearly recorded or substantially implied the technical contents of different cited references.
Moreover, according to the Decision, the fact that the claims in the Case at Issue can be easily achieved by person having ordinary skills in the art of the Case at Issue according to the contents of the cited references was clearly expounded in the original decision, which has clearly discussed its fact-finding basis and reasons of its discretion as well as the determination of arguments as to why the Appellant’s assertions were not acceptable in the original trial court. The original decision does not lack sufficiency. Therefore, the Appellant’s arguments were baseless.