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Should the Technical Level of the Person Having Ordinary Skill in the Art Be Defined When Examining the Non-Obviousness of A Patent?
Regarding the definition of "person having ordinary skill in the art (PHOSITA)" and the technical level thereof, in 2016 Pan Zi No. 503 Judgment rendered by the Supreme Administrative Court on September29, 2016, the Supreme Administrative Court demanded the Intellectual Property Court "establish the knowledge level of 'a PHOSITA' based on the technical field of the patent at issue, the problems encountered by prior technology, the methods to resolve these problems, the complexity of the technology and the ordinary level of practitioners," and thereby reversed the original judgment and remanded the case to the Intellectual Property Court. The Supreme Administrative Court pointed outthat, "in this case, the appellant repeatedly disputed the definition of 'a PHOSITA' in the original trial, but the original judgment arbitrarily concluded that a PHOSITA could easily come up with the means for managing 'a vehicle leaving a parking lot' without clarifying the technical level of a PHOSITAbefore the filing date of the patent at issue, and is therefore meritless."
After the case was remanded and retried, the Intellectual Property Court made a rare announcement on the court website toinvite amicus briefs, and eventually did not come to the same conclusion asthe Supreme Administrative Court's abovementioned judgment. It rendered 2016 Hsing Zhuan Ghun (1) Zi No. 4 Administrative Judgment on May 31, 2018, providing the following opinions:
1. The knowledge and the technical level possessed by a PHOSITA, in principle, are essentially implicit in the specific comparative analysis of the technical features of the cited references. No additional definition is required:
If the following conditions are met, the knowledge and the technical level possessed by a PHOSITA on the filing date of the patent are actually implicit in the patent examination authority's or the court's specific accounts and they thusdo not require additional definition:
(1)the parties have no dispute over the cited reference to the existing prior art, but only over i) whether the technical features of the patent at issue have all been disclosed in the cited references, and ii) whether the difference between the patent at issue and the cited references could be easily completed, and
(2)the patent examination authority could i) specifically and clearly point out how the cited references disclose each and every of the technical features of the patent at issue in its rejection decision andii) also explain howa PHOSITA would easily complete all the technical features of the patent at issue based on the existing cited references for the examination by a third party, including a court.
2. The examination of the knowledge and technical level of a PHOSITA is only substantial when the parties raise a claim thereon and the determination thereof would affectthe judgment:
If the parties make any claim about the technical level of a PHOSITA, and further claim that such technical level may affect whether the specific knowledge or technology could be a cited reference, the patent authority must clearly identify and explain whether such specific knowledge or technology could be accessed or learned by a PHOSITA, in which case it is likely that the knowledge or technical levels of a PHOSITA could be explicitly defined. Only in this situationwould it be meaningful for an examination of the non-obviousness to first define the knowledge or technical level of a PHOSITA. Otherwise, it is not substantial or is only of symbolic significance to simply define the knowledge or technical level of a PHOSITA if no specific limitation or preclusion to the cited references would be triggered.
3. Even if the parties reach a consensus on a PHOSITAand his/her technical level, the court is not necessarily bound by such consensus:
The definition of a PHOSITA and his/her technical level include both factual recognition and also the determination of legal issues. In terms of factual recognition, on the basis of empirical law and the rule of thumb, the court should consider the parties' full debates and the results of the investigation of evidence to distinguish true and false. When the parties are disputing over whether or not a particular technology can be accessed or learned by a PHOSITA, this is essentially equivalent to a dispute regarding "said PHOSITA" or regarding the "technical level" thereof on the filing date of the patent at issue. The investigation and determination of such dispute is the same as that of a general factual dispute, in which both parties and the interveners should provide evidence for their arguments so as to provide the court with a basis for rendering a judgment. Therefore, in terms of the same patent in different cases or proceedings, since the evidence provided by the parties in support of their arguments may differ across cases or proceedings, it is likely that the courts will render different decisions for a PHOSITA and the technical level thereof.
Furthermore, if a party fails to provide sufficient evidence, and this results in the court's failure to distinguish true from false, since the Patent Act lists "lack of non-obviousness" as a reason why the right of patent should not be granted, whoever claims that the patent lacks non-obviousness should receive an unfavorable judgment for his/her/its failure of providing sufficient evidence.
In addition, Article 134 of the Taiwan Code of Administrative Procedure explicitly stipulates: "Although a fact alleged by a party has been admitted by the opposing party, the administrative court shall still investigate other necessary evidence." Therefore, even if the parties have reached consensus on a PHOSITA and the "technical level" thereof on the filing date of the patent at issue, the administrative court is not necessarily bound by such consensus.
Moreover, the definition of a PHOSITA and his/her technical level includes not only factual recognition but also the determination of legal issues, and legal issues should be interpreted by the courts. For example, can said PHOSITA be a group of people having various technological abilities and coming from multiple technical fields? Is a PHOSITA capable of a certain degree of creation and invention, or can he/she only combine different prior arts to complete the invention based on the specific instructions from the prior arts? In order to maintain the consistency of legal interpretation, such legal issues should not be decided by consensus between the parties.
In the aforementioned retrial judgment rendered by the Intellectual Property Court, since the plaintiff did not claim that Exhibit 1 or Exhibit 3 should be excluded from the prior arts thatmay be accessed or learned by a PHOSITA, and did not explain why a PHOSITA would be unable toaccess or learn the prior art disclosed in Exhibit 1 or Exhibit 3 if suchperson is defined as"a practical engineer engaged in the parking-lot charge management system for one or two years," the Intellectual Property Court held that the plaintiff's request that the court define a PHOSITA was lack of supports.