Date: 1 October, 2017

【Volume 6】

The Taiwan Intellectual Property Office (IPO) amended the chapter on inventive step of the Patent Examination Guidelines and is effective from July 1, 2017. We would like to provide the key points of amendment, trends in examination and our suggested strategies:

A. Key Points of the Amendment

1. Improve the problem of combining multiple prior art and specify the necessity of selecting a “primary prior art”:

   The new guidelines adopted the concept of “closest prior art” in examination guidelines in Japan and European Patent Office. In principle, a prior art which is closest to the invention or the most suitable prior art is identified as the “primary prior art”. It is treated as the starting point on which the comparison is made (please refer to P.2-3-17, Section III, Part II of the Patent Examination Guidelines in Taiwan).

2. Stipulate the factors of involving/lacking an inventive step:

   With reference to the examination guidelines in Japan, the new guidelines in Taiwan stipulate the factors of having/lacking an inventive step in “step 5 for accessing inventive step: whether it is possible for the person skilled in the art to carry out the invention of patent application by referring to the content disclosed in relevant prior art and common general knowledge at the date of filing “.

   Below are the factors (please refer to P.2-3-17~23, Section III, Part II of the Patent Examination Guidelines). For most part of the regulations and examples in Section III, references are made to Section 2, Chapter 2, Part III of the current Examination Guidelines for Patent and Utility Model in Japan.

   

3. Redefine “teaching away” and its suitable situation:

   The new guidelines make references to cases of the Taiwan Intellectual Property Court and the United States Courts, “teaching away” is only applicable when “relevant cited prior art clearly disclose or substantially imply that teachings or suggestions of the invention in patent application is unproductive and would not work” (note: teaching away is only established when prior art clearly discloses that technique cannot be used).

   For example, a catalyst of disputed patent contains iron and alkali metals. Citation A discloses that iron is added to the catalyst, yet clearly specifies the exclusion of adding Stibium to the catalyst. Citation B discloses Stibium and alkali metals can be ingredients of the catalyst, whereas they have the identical beneficial result and are interchangeable. Therefore, Citation A teaches away from the invention of disputed patent and the person skilled in the art should not have the motive of combining Citation A and B together to produce the invention (please refer to P.2-3-23~24, Section III, Part II of the Patent Examination Guidelines).

   In contrary, teaching away is not established if prior art only reveals the best mode of the invention and does not clearly preclude teachings and suggestions in the disputed patent, in which the invention of the disputed patent is not the best mode. The prior art does not teach away from the disputed patent when it does not discourage the techniques used in the invention of disputed patent.

   For example, the disputed patent is an epoxy resin based printed-circuit material. The prior art discloses a polyester-imide resin based printed-circuit material, and teaches that epoxy resin based materials have acceptable stability and some degree of flexibility, yet they are regarded as inferior to polyester-imide resin based materials. The prior art does not actually disclose that the epoxy resin material cannot be the material of making printed-circuit boards, and it does not teach away the disputed patent (please refer to P.2-3-23~24, Section III, Part II of the Patent Examination Guidelines).

4. Delete rules related to inventions with “workshop modification of technical features”, “replacement of technical features”, “removal of technical features”, “use in another field ” and pioneer invention. The above rationales will be considered when assessing the inventive step of the claimed invention and there are no extra judging criteria.

B. Future Trends in Examination and Wisdom’s Suggested Strategies

The amendment of the examination guidelines is the result of responding to the criticism of patent examiners combining references arbitrarily without considering the motivation to combine, and other issues such as the rejection of application is often based upon hindsight reasoning. Under the new guidelines, when a patent examiner decides to reject the patent application due to not including an inventive step, the official rejection notice (Office Action) must contain the relevance between technical fields, similarity between problems aim to solve, similarity between functions or effects, teachings or suggestions that prove motives of combing multiple references.

Therefore, the IPO officers and patent practitioners predict the patent allowance rate will increase significantly, which is more beneficial to patent applicants. When responding to the Office Action, we suggest focusing between the cited references and the disputed patent, and between the references. Their differences of relevance between technical fields, similarity between problems aim to solve, similarity between functions or effects, teachings or suggestions should be elaborated in the response. This would be easier to persuade the patent examiner that a person skilled in the art cannot associate cited prior art with the disputed patent, and there is no motive to combine the cited prior art.