A pitfall that is difficult to avoid when determining whether a patent is non-obvious is hindsight bias when comparing a patent with prior art. This is why the Taiwan Patent Examination Guidelines have introduced secondary considerations to determine the non-obviousness of a patent, including 'unexpected results', 'long-felt but unsolved needs', 'overcoming technical prejudice' and 'commercial success'. The guidelines also stipulate that a patentee's evidence for supporting secondary considerations will be considered together with the prior art. Nevertheless, in practice it seems that patentees still have great difficulty in citing commercial success as a factor for claiming the non-obviousness of their patent (eg, the 2020 Pan Zi 232 administrative judgment rendered on 30 April 2020 by the Supreme Administrative Court).
In the case at hand, a disputed patent's obviousness was challenged. The Taiwan Intellectual Property Office (TIPO) found that the invalidation challenge was groundless. The challenging party then filed an administrative appeal with the Ministry of Economic Affairs (MOEA) which revoked the TIPO's original decision. The patentee subsequently filed administrative litigation with the Intellectual Property Court (IPC) against the MOEA's decision, but the IPC dismissed the patentee's action, holding that the patent in dispute lacked obviousness. Consequently, the patentee filed litigation with the Supreme Administrative Court and claimed that the patent in dispute was non-obvious in terms of its commercial success.
The Supreme Administrative Court agreed with the IPC's findings and opined that commercial success is a secondary consideration for determining the non-obviousness of a patent, not the only factor. Further, whether a patented product is commercially successful depends on its technical features or other factors (eg, sales skills, advertising, market supply and demand and the overall social and economic prosperity). While cited prior art was sufficient to prove that the patent in dispute was non-obvious, there was no need to refer to commercial success to determine non-obviousness.
However, determining the non-obviousness of a patent through its commercial success will have little room for application based on the Supreme Administrative Court's recent decision. The determination was based on a combination of the prior art even though the patent in dispute was considered non-obvious by the TIPO in particular. In other words, it is disputed whether the cited prior art disclosed technical features and whether there was reasonable motivation to combine said features. In fact, the Supreme Administrative Court's grounds for not considering commercial success conflicted with the goal of avoiding hindsight bias as well as the stipulation in the guidelines that "the patentee's evidence for supporting secondary considerations shall be considered together with the prior art".
By contrast to the above Supreme Administrative Court decision, the IPC's 14 February 2019 administrative judgment in Xing Zhuan Su Zi 75 recognised the need to introduce commercial success as a factor in determining the non-obviousness of a patent. According to the IPC's decision, while the cited prior art individually disclosed some technical features of a patent claim, it was still questionable whether the cited prior art had the reasonable motivation for a person having ordinary skill in the art to combine the foregoing disclosed technical features. Therefore, it was necessary to introduce the secondary considerations for determining non-obviousness to avoid the hindsight bias caused by the arbitrary subjective determination. Following a comprehensive trial and consideration of the case, the IPC held that the patent in dispute was non-obviousness based on commercial success. The insight from the IPC's judgment offers a valuable case in point.
