Newsletter
The Intellectual Property and Commercial Court recently provided insights on whether determining "the level of person who has the ordinary skill in the art" is necessary for determining an inventive step
According to Article 22 of the Patent Act, determining "whether an invention can be readily accomplished by person who has the ordinary skill in the art (' PHOSITA'） based on prior art" is a core of a determination as to whether an invention patent has an inventive step. However, there seems to be no stable conclusion in judicial practice regarding whether the court needs to define the knowledge level of PHOSITA. The Supreme Court and the Supreme Administrative Court in Taiwan have expressed two distinct opinions in this regard. The first opinion holds that the court should clarify the knowledge level of the PHOSITA; otherwise, the judgment constitutes a violation due to a "lack of grounds." On the other hand, the second opinion holds that the process of demonstrating the inventive step in court concretizes the technical abilities of the PHOSITA to some extent. Therefore, even if the court does not explicitly define the level of the PHOSITA, it is hard to state that the judgment is illegal. For a compilation of relevant judgments and a summary of their reasoning, please refer details to LEE & LI Bulletin - September 2022: https://www.leeandli.com/TW/Newsletters/6945.htm.
Among them, the 2022 Tai Shang Zi No. 186 judgment rendered by the Supreme Court on 20 July 2022, which adopted the first opinion, explicitly indicated that "when a determination is to be made as to whether an invention patent can be readily completed by a person skilled in the art [Note: referred to as the 'PHOSITA' in this article] using existing techniques or knowledge available prior to the filing date of the invention patent, the following steps should be followed: …③ determining the technical level of the person skilled in the art to which the patent at issue pertains; … the appellant argued that the technical terms of the patent at issue should be construed based on the opinions of persons of ordinary skill in the same technical field as of the filing date of the invention patent. It was necessary to have persons skilled in the art more than 20 years ago as expert witnesses to clarify various techniques…In accordance with the above provision and explanation, the technical level of the technical level of the person skilled in the art should be confirmed after investigation since it interfered with the determination on inventive step. However, the original judgment did not explain why the appellant's argument was not adopted and why investigation was unnecessary. Besides, the judgement does not determine the person skilled in the art, which means that the step of "determining the technical level of a person skilled in the art" was missing from the judgment. In such situation, the determination that the claims at dispute were devoid of an inventive step is groundless, in addition to the issues of non-applicable laws and inappropriate application of laws," and used this as one of the reasons to nullify and remand the original judgment.
However, after the original judgment was remanded to the Intellectual Property and Commercial Court (hereinafter referred to as the "IPC Court"), the IPC Court rendered a 2022 Min Zhuan Shang Geng Yi Zi No. 111 judgment on 2 November 2023. It appears that this judgment still contradicts the allegations made by the Supreme Court, as it did not specifically determine the technical level of the PHOSITA, and stated that it is unnecessary to summon expert witness to testify so as to define the technical level of the PHOSITA. The reasoning is summarized as follows.
1. The "person who has the ordinary skill in the art" (PHOSITA) is a fictional character and does not exist in reality. Their technical abilities and subjective creative abilities must be concretized through external evidence. In patent litigation practice, the disputed patent's classification in the technical field and the level of technology presented at the time of the patent application can sufficiently serve as reference materials to concretize the abilities of this fictional character. The process of demonstrating whether the patent has the inventive step in court concretizes the technical abilities of the PHOSITA to some extent. If the reasoning does not violate empirical rules, logical rules, or rules of nature, it is hard to state that the judgment has not explained the knowledge level of the PHOSITA (refer to 2017 Cai Zi No. 597 ruling and 2020 Shang Zi No. 575 judgment, rendered by the Supreme Administrative Court).
2. According to the above mentioned judgment rendered by the Supreme Administrative Court, it can be understood that the PHOSITA is a fictional character, who has general knowledge and ordinary skill in the art, and is capable of understanding and utilizing prior art. The general knowledge refers to the knowledge that is known in the relevant technical filed of the invention, including (1) commonly known or widely used information, (2) information contained in textbooks or reference books, or (3) knowledge derived from empirical rules. The ordinary skill refers to the ordinary ability to perform routine tasks and experiments. The general knowledge and ordinary skill at time of filing is briefly referred to as "the general knowledge at time of filing."
3. The Appellee has submitted text books or reference books related to the patent at dispute (Exhibits 5 to 7) and an essay (Exhibit 8) to support Exhibit 4, wherein all exhibits were published before the filing date of the patent at dispute and are considered the general knowledge at time of filing. Exhibit 4 provides a comprehensive and well-supported arguments, accompanied by references that were published before the filing date of the patent at dispute, which further support their claims, so as to be valuable as a reference for clarifying the point at dispute in this matter. Therefore, Exhibit 4, the expert opinion by Professor Chen Ke-Hong, is deemed to be admissible evidence. Additionally, considering that Exhibit 4 and Exhibits 5 to 8 are sufficient to define the "person who has the ordinary skill in the art and the technical level thereof" at the time of filing the patent at dispute, it is unnecessary to summon Professor Chen Ke-Hong for questioning.
Given the above, it can be seen that even though the Supreme Court has clearly pointed out that the step of determining the "technical level of the PHOSITA" should not be omitted, the IPC Court still hold that the evidences compiled in the file of litigation can present the technical level of the PHOSITA, so there is no need to further specifically define the technical level of a person of ordinary skill in the art, which leans more towards the second point of view mentioned above. Whether the Supreme Court accepts this judgment rendered by the IPC Court remains to be seen in the subsequent appeal results.