25 September, 2017
The TIPO amended the examination guidelines for a patent application involving inventive steps. The amendment came into effect on July 1, 2017. The amendment includes the following aspects:
- The amendment specifically indicates that while the term “a person with ordinary knowledge in the art” in general refers to one person, the term could nonetheless refer to a group of persons if it is deemed more appropriate upon considering the actual facts relevant to the art of the invention that a group of persons possesses the ordinary knowledge in the field of art.
- The definition of the term “easily accomplished” is amended to mean as follows: If a claimed invention could expectedly be accomplished by a person with ordinary knowledge in the art through logical analysis, inference or tests based upon existing prior arts and common knowledge at the time of filing, the invention as a whole would be deemed obvious and easily accomplishable as far as such person with ordinary knowledge in the art is concerned.
- The concept of primary prior art reference is introduced. A single prior art reference is selected among the prior art references suitable for determining the inventive steps, and is compared with the technical content of a claimed invention for differences. Such selected single prior art reference is referred to as “the primary prior art reference”, and all other prior art references used are referred to as the “other prior art references”. In principle, two or more prior art references shall not be combined to form the “primary prior art reference”.
- The principle to determine whether an inventive step could be “easily accomplished” is amended as follows: The subject that whether a person with ordinary knowledge in the art could be motivated and obviously capable to combine the relevant prior arts should be considered during the examination of inventive steps. The probability of combining multiple prior art references should first be determined. If such probability does exist, then the likelihood of forming a proof of lacking inventive steps will be evaluated, including synthetic considerations that the prior art teaches away from the claimed invention, the beneficial effects, the unexpected effects of the claimed invention and the solution of a long-term existing problem by the claimed invention, etc. If a logical and reasonable proof could be established that the claimed invention could be accomplished easily, the claimed invention will be determined to lack an inventive step.
For further information, please contact:
Joyce I. Ho, Partner, Tsar & Tsai Law Firm
joyeho@tsartsai.com.tw
