"The invention has unexpected effects" is one of the auxiliary judgment factors for determining inventiveness in patent examination standards. The reason for this is that when an invention exhibits unexpected effects compared to the relevant prior art, these effects serve as evidence that the invention is not easily achievable. Thus, they can be considered a significant factor in determining inventiveness.

 

According to the current "inventiveness" patent examination standards, "the term 'unexpected effects' refers to instances where the invention, for which a patent is sought, demonstrates effects that are unexpected compared to the relevant prior art. These effects may include significant improvements therein (quantitative change) or the creation of entirely new effects (qualitative change). Such outcomes are considered unexpected by those skilled in the art to which the invention belongs at the time of the patent application."

 

However, in past practice, patentees' claims based on "unexpected effects" to support the inventiveness of the patent have often not been substantiated by the courts. Therefore, it is rare for the courts to recognize this auxiliary judgment factor. For example, in the administrative judgment of the Intellectual Property and Commercial Court on January 12, 2022 (2021-Hsing-Chuan-Su-No. 24), the court held that the plaintiff did not provide data on the expected values of effects, quantity, and level of knowledge in the relevant technical field for the invention, nor did they provide relevant data to compare with the content of Table 1 of the specification of the disputed application. Relying solely on the embodiment and data in Table 1 of the disputed application to claim that the invention has achieved a significant improvement in effects that cannot be expected by those with ordinary knowledge in the relevant technical field was deemed insufficient to establish credibility. The court concluded that it was difficult to establish whether the effects described in the embodiment and Table 1 of the disputed application achieved the invention defined in the claims. Moreover, there was no evidence to prove that the invention in the disputed application exhibited unexpected effects compared to the relevant prior art. Consequently, the court concluded that the patent lacked inventiveness.

 

However, in the judgment of the Supreme Administrative Court 2022-Shang-No. 920, issued on February 29, 2024, the court accepted the argument regarding the auxiliary judgment factor and acknowledged the inventiveness of the disputed patent.

 

In this case, the disputed patent provides a liquid crystal composition and a liquid crystal display element using the same. In the judgment of inventiveness, the court determined that the patent specification had explicitly described certain effects and evaluated the particular effects achieved by the specific composition of the liquid crystal composition with different components through multiple embodiments/comparative examples. The prior art references presented did not reveal that the combination could achieve the particular effects simultaneously, so the court acknowledged that the disputed patent had unexpected effects. Therefore, the invention defined in each claim was not easily achievable by those skilled in the art and had inventiveness.

 

Therefore, according to the aforementioned judgment of the Supreme Administrative Court, the specific description of certain effects in the patent specification and the evaluation of the particular effects achieved by the invention through multiple embodiments/comparative examples may help to assert that the invention exhibits unexpected effects.