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Should the Technical Level of the “Person Having Ordinary Skill in the Art” Be Established First to Assess the Inventive Step in Invention Patent Cases ? Insights from Supreme Administrative Court Judgments
Regarding whether an invention patent possesses an inventive step, Paragraph 2, Article 22 of the Patent Act stipulates that the determination is based on whether a person having ordinary skill in the art could easily accomplish the invention based on prior art before the application.
The "person having ordinary skill in the art" is a hypothetical character. Regarding whether the court should first define the technical level of PHOSITA to facilitate the determination of the inventive step, the views of the Supreme Administrative Court can be broadly categorized into three types:
I. Cases in Which the Supreme Administrative Court Emphasizes the Importance of "Establishing the Knowledge Level of PHOSITA"
For example, in Administrative Judgment 105-PZ No. 503 (Judgment Date: September 29, 2016), the Supreme Administrative Court stated that even if a judgment does not explicitly define or explain who the PHOSITA is, it is legally acceptable. However, the Court emphasized the importance of "establishing the knowledge level of PHOSITA based on the technical field involved, the challenges posed by prior art, the methods used to address those challenges, the complexity of the technology, and the standard level of expertise among practitioners."
II. Cases in Which the Supreme Administrative Court Indicates the necessity of "Establishing the Knowledge Level of PHOSITA"
In Administrative Judgment 107-PZ No. 589 (Judgment Date: October 11, 2018), the Supreme Administrative Court emphasized that the knowledge level of PHOSITA is utilized to set the standard for assessing the inventive step, thereby preventing hindsight bias. "It is necessary to determine the knowledge level of PHOSITA based on external evidence, such as prior art, rather than merely relying on academic qualifications, work experience, or seniority of the PHOSITA."
III. Cases in which the Supreme Administrative Court notes that "the knowledge level of PHOSITA is progressively established through the arguments and defenses presented by both parties."
In recent years, the Supreme Administrative Court has consistently highlighted in its judgments that the knowledge level of a Person Having Ordinary Skill In The Art (PHOSITA) is progressively determined through the arguments and defenses presented by both parties. Provided that this determination does not contravene the rules of experience, the rules of logic, or the laws of nature, the court is deemed to have appropriately established the knowledge level of PHOSITA. Judgments reflecting this perspective include Supreme Administrative Court Judgments 110-SZ No. 543 (dated April 20, 2023), 111-SZ No. 872 (dated January 12, 2023), 111-SZ No. 236 (dated August 24, 2023), 111-SZ No. 401 (dated October 27, 2022), and 111-SZ No. 135 (dated August 30, 2022).
The recent Judgment 113-CZ No. 11 (Judgment Date: September 12, 2024) of the Supreme Administrative Court also adopts the aforementioned third viewpoint. In this case, the plaintiff seeking a retrial contended that, in the prior trial, the Court failed to clarify who the PHOSITA is, which constitutes a legal error. The Supreme Court in this instance reiterated that the court's process of reasoning the inventive step of a patent involves establishing the knowledge level of the PHOSITA, thereby dismissing the plaintiff's motion for retrial. Whether this will become a long-term stable viewpoint of the Supreme Administrative Court is worthy of future observation.