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New Inventive Step Examination Guidelines to Take Effect on July 1

The examination of inventive step is of paramount importance in examining patent applications. However, examiners of the Taiwan Intellectual Property Office (the "TIPO") tend to arbitrarily combine prior art references as if they were pieces of a mosaic, which, very often, results in many findings based on hindsight. In order to prevent this practice and to further enhance patent examination quality, the TIPO amended the inventive step examination guidelines in April 2017. The amendments, which are expected to come into force on July 1, 2017, include the following:


1.               Expanding the definition of PHOSITA

According to the guidelines, the term "PHOSTIA" generally refers to a hypothetical person having ordinary skill in the art. However, in cases that require, for example, interdisciplinary knowledge or research efforts of a technical team, it would be more appropriate to expand the definition of the term to include a group of persons having ordinary skill in the art.


2.               Specifying the scope of relevant prior art

Prior art references used in the examination of inventive step are usually chosen from technical fields identical or relevant to those to which the claimed invention pertains. Under the amendments, prior art references that belong to different or irrelevant technical fields but share some common technical features with the claimed invention are also regarded as relevant prior art references.


3.               Amending the definition of "easy-to-accomplish" (obviousness)

The TIPO has deleted the following passage from the examination guidelines:


If a claimed invention could have been easily made by combining, modifying, substituting or adapting the teachings of one or more prior art references in view of the common knowledge at the time of filing, then the claimed invention as a whole is obvious. In that case, the examiner should determine that the claimed invention can be easily arrived at.


The TIPO has replaced the above-quoted passage with the provision that if a PHOSITA, in view of the prior art, would have arrived at the claimed invention through logical analysis, inference or routine work and experimentation, the claimed invention is obvious and can be easily accomplished.


4.               Identifying the primary reference

When determining the possible differences between a claimed invention and the teachings of relevant prior art references, the examiner should choose one prior art reference from all the prior art references found as the primary prior art reference for comparison with the claimed invention, which may belong to the same technical field as the claimed invention or aims to resolve a problem substantially the same as that of the claimed invention.


5.               Redefining the test for determining whether there is an inventive step

Under the amendments, the examiner should first determine whether it would be obvious to combine the relevant prior art references and the common knowledge at the time of filing. If yes, the examiner should then determine whether there is any evidence indicating that the claimed invention lacks an inventive step. In this step, the examiner should consider whether the prior art teaches away from the claimed invention and the advantages of the claimed invention. If there is logical and reasonable proof that the claimed invention can be accomplished easily, the claimed invention lacks an inventive step. Otherwise, the claimed invention involves an inventive step.


According to the amendments, a prior art reference is deemed to teach away from the claimed invention if it is obvious that the teachings of that prior art reference cannot be combined with those of another prior art reference. Some examples of teaching away are provided in the amendments.


It is believed that if the new guidelines are fully observed by all examiners, the quality of inventive step examination will be improved.