The amendments to the determination of inventive step enshrined in the examination guidelines of the Taiwan Intellectual Property Office (TIPO) took effect on July 1, 2016 and from then on TIPO’s office actions refusing grant on inventive step grounds are now based on this new version of the guidelines. These amendments (including the definition of a person having ordinary skill in the art (PHOSITA), procedure of inventive step determination and so on) have been made in the hope of setting a clearer standard for the determination of inventive step with some obvious differences from the prior version.

In order to respond to TIPO’s office actions appropriately, it is necessary for the applicant to have a proper understanding of TIPO’s examination guidelines. This article is intended as an introduction to TIPO’s new standards for inventive step determination, in the hope that it will be help readers to understand the spirit of the new version of the guidelines.

Relevant Regulation – Patent Act 22(1), (2)

Before we get to the inventive step, we should first talk about the concept of novelty. Article 22(1) lays down the provisions concerning novelty in Taiwan’s patent act. It stipulates that an invention which is industrially applicable may be granted a patent upon application in accordance with the same act, except if, prior to the filing of its application, the claimed invention was “(i) disclosed in a printed publication”, “(ii) publicly exploited”, or “(iii) publicly known”. The main concept of this provision is that the claimed invention (CI) must not be the subject of prior art. In other words, if any substantial difference is found whilst comparing the CI with any single prior invention, the CI can be said to have novelty.  

The prior art that can be used to determine novelty comprises everything made available to the public before the effective filing date by means of a written or oral description, by use, or in any other form. Of course, this also extends to general knowledge. There are no linguistic or geographical restrictions on prior art. Conflicting applications (referred to by Act 23) can be deemed as secret prior art, however, they can only be used to determine novelty.

As for the regulations relating to inventive step, the main reference is the provisions of Article 22 (2), which stipulate that “An invention that is without the circumstances prescribed in the subparagraphs of Article 22 (1) but can be easily made by a person ordinarily skilled in the art (i.e. PHOSITA) based on prior art, shall not be patented.” In other words, even though the claimed invention has novelty, if, prior to the filing date of the patent application, the CI can be easily made by a PHOSITA, based on the relevant prior art, it still shouldn’t be granted patent rights.

The PHOSITA, referred to above, is a hypothetical person and, in some cases, may be a group of people. He/she should be equipped with general knowledge and an average ability in the relevant technical field before the relevant (filing) date and able to use ordinary technical means for research and development, to comprehend all the matter in the prior art of the relevant technical field, and to comprehend all technical matters in the field relevant to problems to be solved by the invention. The skill level of a PHOSITA can be determined by considering (i) the type of problems encountered in the art, (ii) prior art solutions to those problems, (iii) rapidity with which innovations are made, (iv) sophistication of the technology, and (v) educational level of active workers in the field. However, it may usually be reflected by the content of the relevant prior art (RPA). It should be noted that RPA refers to subsets of prior art, belonging to the relevant technical field of the CI or having technical features in common with the CI (i.e. RPA should have relevance to the CI).

Concept and Principle for Inventive Step Determination

The main concept of TIPO’s determination for inventive step is “whether or not the examiner can articulate a rationale to show that a PHOSITA can easily arrive at the CI based on the relevant prior art”. And the principles include:

1. Combination of several instances (cited inventions) of the relevant prior art is allowable.
2. While evaluating the scope of a claim, all limitations in the claim must be considered as a whole; i.e. the examiner may not dissect a claimed invention into discrete elements and then evaluate the elements in isolation.
3. When there is more than one claim in an application, the inventive step should be determined for each claim.

Procedures for Inventive Step Determination

The flow chart of TIPO’s procedure for inventive step determination is shown in the following figure:

While determining the inventive step, the examiner should follow the steps below.

First of all, they must correctly construe the claimed invention. Similarly to the examiners of other IP offices, when interpreting claims, the broadest reasonable interpretation is adopted by TIPO’s examiners.

Secondly, they must determine the scope and contents of the relevant prior art. Here, the RPA is the prior art belonging to the relevant technical field of the CI or which has technical features in common with the CI (the RPA must have relevance to the CI).

Thirdly, they must determine the level of the PHOSITA. As previously mentioned, the level of the PHOSITA is usually reflected by the content of the RPA.

Fourthly, they must ascertain the differences between the RPA and the CI. It should be noted that, during this stage, the examiner should select cited inventions to form the relevant prior art. The one most suited to this purpose is referred to as the primary prior art (also called PPA); the others are referred as the secondary prior art, the terciary prior art … and so on. And then the difference(s) between the PPA and CI should be identified.

Finally, the existence of an inventive step should be assessed. At this stage, the examiner should take into consideration the factors in support of both non-existence and existence of an inventive step and try to articulate the rationales for obviousness. The following approaches should be adopted:

1. Consider prudently whether or not there exist any factors in support of the non-existence of an inventive step. The factors in support of the non-existence of an inventive step include “motivation for combining several cited instances of prior art”, “simple variation (of PPA)”, and “mere aggregation (of cited instances of prior art)”.
2. If the answer is yes, the examiner should further consider factors in support of the existence of an inventive step and try to construct the articulation of rationale for obviousness. The factors in support of the existence of an inventive step include “teach away”, “advantageous effect”, and “secondary consideration”. If the examiner cannot successfully articulate the rationale for obviousness, the claimed invention has an inventive step. On the other hand, if the rationale for obviousness can be reasonably articulated, the claimed invention is without an inventive step.

Factors Taken into Consideration

As mentioned in the above paragraphs, the examiner should consider the factors in support of non-existence and existence of the inventive step for the claimed invention prudently. Only after considering all the factors involved in these two aspects comprehensively can the existence of an inventive step for the CI be appropriately assessed.

Factors in support of the non-existence of an inventive step include “motivation for combining multiple items of cited prior art”, “simple variation (of PPA)”, and “mere aggregation (of instances of cited prior art)”. And the following points should be noted:

1. While considering motivation for combining multiple items of cited prior art, the examiners at TIPO should think about the relevance among the cited items of prior art and consider them comprehensively from the following points of view: “relevance of technical fields”, “similarity of problems to be solved”, “similarity of operations or functions”, and “teaching or suggestion”. Please let it be noted that, here, what matters is the relevance of different items of cited prior art, rather than the relevance between the cited prior art and the claimed invention (This is greatly different from the way the scope and contents of the relevant prior art are determined.).
2. For simple variation, it can include “replacement of equivalents”, “design variation for applying specific technique”, “simple omission causing removal of related functions/effects”, “optimum selection of materials, numerical ranges”, and “similar use of known technique in relevant technical field”.
3. As for mere aggregation, the examiner should indicate that functions or operations of claimed elements are not related to (or do not interact with) each other and therefore the claimed invention is a mere aggregation of cited prior art inventions.

On the other hand, factors in support of the existence of an inventive step include “teach away”, “advantageous effect”, and “secondary consideration”. And the following points should be noted:

1. For teach away, the examiner should note that evidence leading the PHOSITA away from arriving at the claimed invention may support the existence of an inventive step.
2. For advantageous effect, the examiner should note that advantageous effect, which is disclosed in or can be speculated (by PHOSITA) from the description (drawings…) of the application, should be considered.
3. As for secondary consideration, it puts emphasis on the CI “resulting in an unexpected result”, “overcoming technical prejudice”, “fulfilling a long‑felt need”, or “obtaining commercial success”.

How to Properly Respond to TIPO’s Notification of Reasons for Refusal on Grounds of Inventive Step

As mentioned in the above paragraphs, TIPO examiners need to be prudent when considering the factors in support of non-existence and existence of the inventive step for the claimed invention and then try to construct the rationale for obviousness. The best way to show the inventive step of the claimed invention, therefore also lies there. Upon receiving notification of reasons for refusal on the grounds of lack of an inventive step, it is suggested that the applicant should first try and understand the rationale articulated by the examiner. Once they have got to grips with the rationale, they should try to argue (i) there actually aren’t any factors in support of the non-existence of inventive step or (ii) there are factors in support of existence of inventive step and to the degree that the rationale for obviousness can’t be reasonably constructed. For example, the applicant can argue that the PHOSITA has no motivation to combine different cited inventions or that the effects achieved by the claimed invention can’t be expected by the PHOSITA based on the relevant prior art. By reasonably arguing all factors concerning the claimed invention with the examiner, it is possible to dismiss the rationale for obviousness and reassure them that there is an inventive step in the claimed invention.

Conclusion

The amendments of TIPO’s examination guidelines for inventive step determination have introduced a clearer standard for the determination of an inventive step.  According to this new version of the examination guidelines for inventive step determination, the examiner must take into consideration the factors in support of both non-existence and existence of the inventive step and try to articulate the rationale for obviousness. If the examiner cannot reasonably articulate the rationale for obviousness, the claimed invention has an inventive step. However, if the rationale for obviousness can be reasonably articulated, the claimed invention is without an inventive step. In order to respond to TIPO’s notification of reasons for refusal on the grounds of lack of an inventive step appropriately, it is suggested that the applicant should have good understanding about the logic of TIPO’s inventive step determination and try to emphasize the inventive step of the claimed invention based on the factors described in the examination guidelines.

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