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International Patent Classification Is Merely One of the Factors in Determining Whether There Is Motivation to Combine Multiple Citations

Michael Sun/Jackie Yang


Article 120 of the Patent Act applied mutatis mutandis to Paragraph 2 of Article 22 of the Patent Act, which stipulates that a utility model patent application that can be easily accomplished by persons ordinarily skilled in the art in view of prior art shall not be patented.  According to the Patent Examination Guidelines, in order to determine whether the patent application can be easily accomplished by persons ordinarily skilled in the art in view of the citations, it is necessary to consider whether there is motivation to combine multiple citations.  Further, such motivation depends on whether the multiple citations are relevant or common in their technical contents. In principle, factors such as technical fields, problems to be resolved, functions or effects, teachings or suggestions and so on should be comprehensively considered.

 

In the judgment No. 478 (2019) issued by the Supreme Administrative Court, the appellant (plaintiff) claimed that the International Patent Classifications of Exhibits 2, 3 and 4 are respectively A47B47/00, B65D5/00, F16L55/11 and accordingly they are in different technical fields. Furthermore, they have different problems to be resolved, and have different functions or effects, and persons ordinarily skilled in the art have no motivation to combine Exhibits 2, 3 and 4.  Further, Exhibits 2, 3, and 4 do not teach or suggest the technical features of the claimed inventions of the patent at issue, so it is hard to say that combining Exhibits 2, 3 and 4 is obvious.  The Supreme Court disagrees with the  appellant, and pointed out that the so-called "technical field" is the specific technical field, which generally pertains to the basic classification of the International Patent Classification.  However, even if the technical fields are different and under different International Patent Classifications, to determine whether their technical contents are related, it should comprehensively consider factors such as the articles to be applied, principles, mechanisms, effects and so on.  After considering the above factors, if they are considered as similar to each other, the citations will be deemed as having similar technical contents.  In fact, the International Patent Classifications of Exhibits 2 and 3 are respectively A47B47/00 and B65D5/00, but their technical solutions are similar, and thus have similar technical contents.

 

Given the above, the International Patent Classifications can be used to determine the technical fields, but it is merely one of the factors in determining whether there is motivation to combine multiple citations.  The court still need to comprehensively consider other factors such as problems to be resolved, functions or effects (articles to be applied, principles or mechanisms), teachings or suggestions and so on.  In this judgement, the court notices that different International Patent Classifications do not necessarily mean that there is no motivation to combine Exhibits 2 and 3.  In contrast, after comprehensively considering the functions or effects (articles to be applied, principles or mechanisms) of citations as well as the International Patent Classifications, the court ultimately still considers that persons ordinarily skilled in the art would have motivation to combine Exhibits 2 and 3.



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