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15 April 2019
On 14 February 2019 the Supreme Administrative Court considered whether a patent lacked an inventive step due to teaching away (Judgment 108-Pan-Zi-55).
Under Article 3(3)(4)(2) of Taiwan's patent examination guidelines, when determining whether an invention has an inventive step, all of the content disclosed in the prior art must be considered, including any prior art that teaches away from the applied-for invention. If prior art teaches away from the invention, the invention is considered as having an inventive step.
The disputed patent had been challenged before the Intellectual Property Office, which had rejected the appellee's invalidation action.
The appellee had filed an administrative lawsuit before the Intellectual Property Court (IP Court), which had reviewed the case and decided that:
The appellant appealed the IP Court's judgment before the Supreme Administrative Court, asserting that some of the prior art taught away from the prior art combination and that, therefore, the other prior art did not disclose the disputed patent.
The Supreme Administrative Court clarified that in order to show that a prior art reference teaches away, the evidence must expressly state or substantively imply an instruction or suggestion on an invention's exclusivity, including where:
However, while the prior art specified by the appellant had adopted different means from those of the disputed patent, such prior art did not expressly state or substantively imply that these could not be combined with other prior art.
Therefore, teaching away was not applicable in this case and the IP Court's decision was upheld.
The Supreme Administrative Court's judgment conforms with existing patent examination standards, wherein the grounds for teaching away require opposite instructions to be expressly stated or substantively implied in the evidence. If a patentee argues that prior art teaches away from an invention, they must specifically identify the expressive statement in the prior art or explain how the prior art substantively implies the opposite instruction. If the prior art merely uses different technical means from those of the patent, the court may decide that it does not constitute teaching away.
For further information on this topic please contact Tsung-Yuan Shen at Lee and Li Attorneys at Law by telephone (+886 2 715 3300) or email (email@example.com). The Lee and Li website can be accessed at www.leeandli.com.
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