Overturning the TIPO: The IPCC's Novel Perspective on 'Motivation to Combine' in Taiwanese Patent Law
Date: 28 November 2025
【Volume 160】
In patent invalidation and litigation proceedings, the determination of inventive step frequently involves the combination of multiple pieces of prior art. Accordingly, the definition of “motivation to combine” and “the interpretation of claims” become pivotal points of dispute.
This article examines a recent, significant ruling from the Taiwan Intellectual Property and Commercial Court (IPCC) involving a utility model related to a Heat-Insulating and Moisture-Proof Lining Bag of Container. In this case, the IPCC overturned the Taiwan Intellectual Property Office (TIPO)’s decision of dismissal of the invalidation request (2022 XingZhuanSuZi No. 65 Administrative Judgment). The subsequent upholding of this judgment by the Taiwan Supreme Administrative Court (2023 ShangZi No. 824 Judgment) solidified its importance.
Crucially, the IPCC presented a new and distinct perspective that differs from previous views regarding the TIPO’s methodology for both the explanation and the combination of technical features derived from multiple pieces of prior art. This shift establishes a potentially new standard for assessing inventive step in Taiwan. A detailed analysis of this development is provided below.
Case Facts
San Miguel Yamamura Woven Products Sdn Bhd (the plaintiff, or the invalidation requester) filed an invalidation request against the utility model patent entitled “Heat-insulating and moisture-proof lining bag of container” (Patent No. TWM604311, hereinafter as “the disputed patent”) owned by a natural person (the defendant, or the patentee). The TIPO rendered a decision dismissing the invalidation request (Case No. 109211264N01). Dissatisfied with the decision, the plaintiff filed an administrative appeal with the Ministry of Economic Affairs (MOEA), which was rejected. The plaintiff subsequently filed a lawsuit with the IPCC. Upon review, the IPCC overturned the TIPO’s decision, holding that Claims 1 to 5 of the disputed patent should have been declared invalid. The patentee, in disagreement with the IPCC’s judgment, appealed to the Supreme Administrative Court, which dismissed the appeal and upheld the original judgment of the IPCC.
Technical Content of the Disputed Patent
The disputed patent relates to a heat-insulating and moisture-proof lining bag of a container. The main technical feature at issue is: “a connecting flap is provided on the edge of the cuboid-shaped bag body, the connecting flap being formed with an opening corresponding to the position of the hanging ring, and an openable locking ring being correspondingly disposed at the opening of the connecting flap.”
[structural schematic of the disputed patent]
Invalidation Exhibits and Main Issues
The invalidation requester asserted that the combination of Exhibits 2 and 3 had already disclosed the main technical features of Claim 1 of the disputed patent, and that Exhibit 5 disclosed the remaining technical features of Claim 1. Accordingly, the combination of Exhibits 2, 3, and 5 could demonstrate Claim 1 of the disputed patent lacks an inventive step.
1. Exhibit 3 (Primary Exhibit) (China Utility Model Patent No. CN202295908U “Lining bulk bag”)
[Exhibit 3 Figure 1]
2. Exhibit 2 (Taiwan Invention Patent No. I316917 — “THERMAL INSULATION LINER”)
[Figure 3 of Exhibit 2]
[Figure 4 of Exhibit 2]
Opinion of the TIPO
The TIPO held that Exhibits 2 and 3 did not disclose the technical features of Claim 1 of the disputed patent, namely, “a connecting flap (feature c) is provided on the edge of the cuboid-shaped bag body, the connecting flap being formed with an opening corresponding to the position of the hanging ring, and an openable locking ring being correspondingly disposed at the opening of the connecting flap (feature d).” Therefore, Claim 1 of the disputed patent could not have been easily combined or completed through simple modification based on Exhibits 2 to 5 by a person ordinarily skilled in the art. The reasons are as follows:
1. The connecting buckles 1-3 of Exhibit 3 and hole or reinforcement ring 40 of Exhibit 2 are not positioned in a corresponding or aligned relationship, and therefore cannot be pieced together for comparison with the technical features of Claim 1 of the disputed patent.
2. Furthermore, the connecting buckles 1-3 of Exhibit 3 are scattered along the edges, which are inconsistent with the manner disclosed in Exhibit 2, where the hole or reinforcement ring 40 is arranged to be combined with a liner 20.
Opinions of the IPCC and the Supreme Administrative Court
However, the IPCC and the Supreme Administrative Court held an opposite view from that of the TIPO. Their opinions are summarized as follows:
1. Features (c) are disclosed in Exhibits 2 and 3, while feature (d) is a common solution to a person ordinarily skilled in the art:
According to the disclosure of Figure 4 and the specification of Exhibit 2, the hole 40 corresponds to the connecting flap 2 of the disputed patent, and a hole 40 is provided on the edge of the liner 20 of Exhibit 2, which corresponds to the technical feature of Claim 1 of the disputed patent that “a connecting flap is provided on the edge of the cuboid-shaped bag body.”
According to the disclosure of Figure 4 and the specification of Exhibit 2, it is known that the engagement of the connecting hook 71 with the hole 40 is a common solution. The specification of Exhibit 3 also discloses that the connecting buckles 1-3 may be selected as a ring fastener. For a person ordinarily skilled in the art, it is a common solution to engage a ring fastener with an opening. Therefore, it would not be difficult to select the connecting buckles 1-3 of Exhibit 3 as a ring fastener and combine it with the hole 40 of Exhibit 2.
2. Both Exhibits 2 and 3 are capable of achieving the effect attainable by Claim 1 of the disputed patent:
The patentee alleged that Exhibits 2 and 3 merely disclose a basic connection method between a container and a liner, and do not include the patented technology of the disputed patent that provides functions such as sealing and operational flexibility during opening through the connecting flap 2.
Upon review, however, Exhibit 3 describes that the connecting buckles 1-3 is provided on the ridge edge of the top surface 1-2 of the lining bulk bag 1. The lining bulk bag 1 is made of polyethylene film material and polypropylene woven fabric, and by combining these two materials, it achieves good sealing. The hole 40 of Exhibit 2 corresponds to the connecting flap of the disputed patent. For a person ordinarily skilled in the art, it would not be difficult to refer to the arrangement of the hole 40 in Exhibit 2 and adjust the number and position of the holes as needed to achieve the operational flexibility during opening.
3. A person ordinarily skilled in the art would have had the motivation to combine Exhibits 2, 3, and 5 to accomplish the invention of Claim 1 of the disputed patent:
Exhibits 2, 3, and 5 collectively disclose all the technical features of Claim 1 of the disputed patent. The technical contents of Exhibits 2, 3, and 5 all pertain to the technical field related to liner bags for containers and share the common purpose or function of protecting goods. Therefore, a person ordinarily skilled in the art, based on the connecting buckles 1-3 and the connecting hook disclosed in Exhibit 3, would have been motivated to simply modify the structure of the lining bulk bag 1, and to combine it with the opening of the hole 40 disclosed in Exhibit 2 and the magnets and zipper disclosed in Exhibit 5, thereby easily accomplishing the technical features of Claim 1 of the disputed patent.
Wisdom Analysis and Suggested Strategies
In this invalidation case, the fundamental difference between the determinations reached by the TIPO and the courts (IPCC/Supreme Administrative Court) stems from their methodological approaches to prior art comparison.
1. Divergence in Methodological Approach
The TIPO’s assessment primarily focused on the structural configuration differences between the claimed invention and the specific embodiments disclosed in the individual prior art.
Conversely, the courts' assessment departed from the specific embodiments of the prior art. Instead, the courts evaluated whether the technical features of the disputed patent had been disclosed based on the original functionality of each individual element. By extracting these individual elements from their specific original context and comparing whether they could be combined to achieve the technical content of the invention, the courts essentially adopted a broader interpretation of the "motivation to combine" the prior art.
This shift is partly influenced by the nature of the utility model, whose definitions in the specification and claims are often less rigorous than those for invention patents, thereby allowing for a relatively broad interpretation of the claim scope. While this methodology of extracting and combining functional elements risks succumbing to “hindsight bias” if not applied with rigorous justification, it undeniably represents a significant emerging trend. Both patentees and invalidation requesters must closely monitor this development and adjust their litigation strategies accordingly.
2. The Critical Role of Technical Effects
A secondary, yet critical, factor contributing to the loss of the case was the finding that the overall technical content of the disputed patent lacked adequate support from concrete technical effects. Without a valid basis to establish an unexpected or superior technical effect, asserting inventive step becomes inherently difficult. This shortfall proved to be a key factor leading to the ultimate invalidation. Therefore, patentees must exercise paramount caution when articulating and providing support for the claimed technical effects during the specification drafting process.
