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How to Establish Criteria for a PHOSITA?
No matter in the Taiwan Patent Act or patent systems of other countries, a person having ordinary skill in the art (hereinafter a "PHOSITA") is utilized as a virtual subject for judging the patentability. For instance, Paragraph 2 of Article 22 of the Taiwan Patent Act requires an exploration into whether an invention application filed can be easily made by a PHOSITA based on prior art when an application's inventive step is examined. Paragraph 1, Article 26 of the Taiwan Patent Act also provides that to determine whether the patent specification fully discloses the invention in a manner clear and sufficient, it depends on whether the PHOSITA can understand the content and carry out the invention. In addition, Taiwan's Patent Examination Guidelines further stipulates that a PHOSITA shall be served as a subject of judgment and criteria when interpreting patent claims. Therefore, it should be an important legal issue to establish criteria for a "PHOSITA" in the field of patent examination and patent infringement litigation.
However, previous judicial judgments in Taiwan did not specifically interpret a "PHOSITA", identify capability or academic/experience criteria for a "PHOSITA", or explain how a "PHOSITA" is virtualized by courts during litigation processes so as to determine the validity of disputed patents. Since a "PHOSITA" belongs to a kind of "indefinite legal concept" in administrative laws, and since patent litigations often involve advanced technologies or even technologies still under development, how to interpret and apply this indefinite legal concept still remains doubtful.
The Supreme Administrative Court clearly stated its opinion on how the court judges and establishes criteria for a "PHOSITA" in its 2016-Pan-No.503 judgment rendered on September 29, 2016:
According to general definitions, the PHOSITA refers to a virtualized person who has both ordinary skills in the art and ordinary capabilities to conduct routine work and experiments that are required to understand and exploit art prior to the filing date (or the priority date if patent priority is claimed). As a virtualized person, a PHOSITA is neither the patent examiner, judge of patent validity litigations nor a technical examination officer. Such virtualized person is provided in the Patent Act to exclude hindsight from the examination process of inventive step. A "PHOSITA" comprises elements of knowledge and elements of enablement. Elements of knowledge refers to general knowledge which is "already well-known, including conventional or publicly used information and information contained in textbooks or reference books" and should not be judged by such academic levels as high school, undergraduate degree or master's degree. If the element is defined by academic achievements, a PHOSITA would not pertain to a virtualized person but an unspecific person within a specific scope. In addition, said "ordinary capabilities to conduct routine work and experiments" are taken as elements of enablement of a "PHOSITA".
In the abovementioned judgment, the Supreme Administrative Court explained that, though it is difficult in litigation practice to identify criteria for a PHOSITA, this virtualized person is a crucial objective standard for determining inventive step. The Supreme Administrative Court advised that before judging inventive step, the courts shall first identify the skill standards of a "PHOSITA" based on the technical field of the disputed patent, the problems encountered by its prior art, the methods proposed to resolve these problems, the complexity of disclosed technologies, and the ordinary levels of practice, and shall also timely and appropriately provide the parties involved with an opportunity to clarify the elements of a "PHOSITA" or elucidate their own legal opinions and thoughts.
It remains to be seen whether the abovementioned judgment by the Supreme Administrative Court will have a long-term impact on local courts. However, after the judgment, the Intellectual Property Court has rendered a judgment (2014-Min-Zhuan-Shang-Geng(1)-No.10 dated October 27, 2016) wherein the scope of a "PHOSITA" was defined by academic background and work experience.