Luke Hung and Albert Yen
Concerning the issue of whether it is necessary to clearly define the “people having ordinary skill in the art and their skill level” mentioned in the title of this article, the Supreme Court pointed out in its 111-Tai-Shang-186 Civil Decision: “The Appellant asserted during the original trial that the interpretation of the terminology in the patent-in-suit should be based on opinions of the people having ordinary skill in the art at the time of invention and applied for questioning an expert witness. However, the original decision failed to indicate the reasons why the motion was not acceptable and why there was no need for investigation and to establish the people skilled in the art, and thus the original decision contravenes the law for lack of reasons.” According to the gist of this decision, the Supreme Court seemed to suggest that in the determination of non-obviousness, the “people having ordinary skill in the art and their skill level” should be defined first if there is any dispute between the parties in that regard.
An observation of the previous trial practice indicates that the Intellectual Property Court, the predecessor of the Intellectual Property and Commercial Court, frequently handed down decisions with a negative view (regarding the above issue) and held that “from the submission of the prior art , the skill level of the people having ordinary skill in the art should be able to be determined,” thus there is no need to define the “people having ordinary skill in the art and their skill level” in advance.
However, the Supreme Administrative Court has also rendered a decision that affirms the need to address (the above-mentioned issue) and held that “…although the Appellant disputed time and again the meaning of the ‘people having ordinary skill in the art’ in the original trial court, still the original decision jumped to the conclusion that people skilled in the art could easily think of the invention without specifying the skill level of the people skilled in the art before the application date of the patent-in-suit…the original decision contravenes the law for lack of reasons…” Although the decision agreed that in the practical operation of litigations, it is difficult to a certain extent to identify the people having ordinary skill in the art and, therefore, the Supreme Administrative Court also tolerated the practice of the Intellectual Property Court of “not defining or explaining, in particular, the people having ordinary skill in the art,” still the decision held that “the establishment of such a virtual person is critical to the objective determination of non-obviousness, and, therefore, the Intellectual Property Court should preferably ‘establish’ the skill level of the people having ordinary skill in the art‘ and timely and properly reveal its legal opinion and inner conviction to provide the parties with sufficient opportunity to present arguments.
The above-mentioned Supreme Administrative Court decision partially reversed and remanded the original decision, while the Intellectual Property Court, in a rare move, solicited opinions via amicus curiae before deciding: “After the cited references in this case become certain, the people having ordinary skill in the art usually would emerge naturally, and it is not necessarily required (and, in fact, not essentially possible) to use a specific literary expression to describe the skill level of the people having ordinary skill in the art.” The Intellectual Property Court did not seem to follow the requirements of the Supreme Court completely and instead adhered to its common practice in the past.
Based on the foregoing, the above issue still gives rise to greater controversies in practice. The Supreme Court and the Supreme Administrative Court tend to hold affirmatively that the original trial courts should preferably define the “people having ordinary skill in the art and their skill level” first and give the parties an opportunity to investigate the evidence or debate the issue. In contrast, the Intellectual Property and Commercial Court holds that since such a standard usually has been substantively implied in the cited references and the comparative analysis of technical features and can certainly “gradually emerge” during the offense and the defense between the parties, it may not be necessary to clearly define this in advance. The impact of the opinions of the Supreme Court and the Supreme Administrative Court on the trial practice of the Intellectual Property and Commercial Court remain to be seen in the future.
 For example, the 104-Xing-Zhuan-Su-34 Administrative Decision of the Intellectual Property Court
 The 105-Pan-503 Administrative Decision of the Supreme Administrative Court
 The 104-Xing-Zhuan-Su-27 Administrative Decision of the Intellectual Property Court
 The 105-Xing-Zhuan-Keng-(1)-4 Administrative Decision of the Intellectual Property Court
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