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11 December 2017
It has always been a challenge to determine whether an invention patent specification has an inventive step when compared with the prior art. This is because only when no identical prior art is found will it be determined whether the patent has an inventive step.
During examination the invention must be compared with prior art references in order to determine whether any person having ordinary skill in the art at the time of filing is able to replicate the invention through simple modifications to prior art references. In a cancellation action, in order to demonstrate that a person having ordinary skill in the art can replicate a patented invention, the cancellation petitioner may cite several prior art references to support his or her argument.
Recently, courts have requested that where combinations of two or more prior art references are brought against the inventive step of an invention patent, the cancellation petitioner must provide proof that the person having ordinary skill in the art is sufficiently motivated to combine the multiple prior art references. According to the Patent Examination Guidelines 2013, in order to determine whether a person having ordinary skill in the art would be motivated to do so, the following matters must be taken into consideration:
The guidelines further state that the absence of any of the above does not necessarily mean that there is a lack of motivation to combine prior art references.
However, the guidelines do not discuss the eventuality that a person having ordinary skill in the art is motivated to combine multiple prior art references provided that one of the matters is satisfied by prior art references and the invention patent.
In May 2017 the IP Court gave its opinion on the specific criteria used to determine whether a person having ordinary skill in the art is motivated to combine prior art references in order to replicate an invention (2016-Xing-Zhuan-Su-Zi-65). The case involved a cancellation action followed by an administrative suit. The opposed patent related to the position of a motorcycle's rear seat pedals. The cancellation petitioner cited two prior art references and argued that any person having ordinary skill in the art could easily replicate the invention in question by combining them. Both prior art references concerned a motorcycle with rear seat pedals, but the positions were different from those specified in the claim of the target patent. Although the target patent related to the modification of common mechanical structures, the IP Court held that a person having ordinary skill in the art would not be sufficiently motivated to combine the cited references. A summary of the IP Court's opinion is as follows:
It is difficult to avoid hindsight in determining whether an invention concerning modifications to common mechanical structures has an inventive step. The IP Court's method in reaching its opinion (ie, rigorously cross-comparing the technical content, objectives and functions of prior art references and the invention in question) is a useful model for this issue going forward.
For further information on this topic please contact May Chen at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email (firstname.lastname@example.org). The Lee and Li website can be accessed at www.leeandli.com.
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