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Is Commercial Success a Factor Considered in Determining the Non-obviousness of a Patent?
In determining whether a patent is nonobvious, one pitfall that is often difficult to avoid is to judge with hindsight bias by mechanically comparing a patent with prior arts. That is why the Taiwan Patent Examination Guidelines (the "Guidelines") have introduced the secondary considerations for determining the non-obviousness of a patent, including "unexpected results," "long-felt but unsolved needs," "overcoming technical prejudice" and "commercial success." The Guidelines also stipulates that the patentee’s evidence for supporting secondary considerations shall be considered together with the prior arts. In practice, nevertheless, it seems that a patentee still has great difficulties in using "commercial success" as a factor for claiming the non-obviousness of his or her patent, with the example from the 2020 Pan Zi No. 232 administrative judgment rendered recently by the Supreme Administrative Court on April 30, 2020.
In the foregoing administrative judgment, the patent in dispute was challenged that it is obviousness and shall be invalid. Upon examining the foregoing invalidation, the Taiwan Intellectual Property Office (TIPO) rendered a decision that the invalidation challenge is groundless. The invalidation requester then filed an administrative appeal to theMinistry of Economic Affairs (MOEA), and the MOEA, on the other hand, revoked TIPO's original decision. The patentee subsequently filed an administrative litigation to the Taiwan's Intellectual Property Court (IPC) against MOEA's decision, and the IPC dismissed the patentee's action by holding that the patent in dispute lacks non-obviousness. Consequently, the patentee filed the litigation herein to the Supreme Administrative Court and claimed that the patent in dispute is non-obvious with its "commercial success."
However, the Supreme Administrative Court still agreed with the IPC's holdings, opined that "commercial success" is only a secondary consideration for determining the non-obviousness of a patent, not the only factor. Besides, whether a patented product is commercially successful or not depends on its technical features as well as other factors such as sales skills, advertising, market supply and demand, and the overall social and economic prosperity. While the cited prior arts are sufficient to prove that the patent in dispute is non-obvious, there is no need to refer to the so called "commercial success" for determining the non-obviousness.
However, the factor for determining the non-obviousness of a patent with its “commercial success" will have little room for application if according to the foregoing opinions of the Supreme Administrative Court. The determination is still based on the combination of the prior arts even though the patent in dispute was considered non-obvious by the TIPO in particular.In other words, it seems controversial whether the cited prior arts disclose the technical features and whether there is a reasonable motivation to combine. In fact, the Supreme Administrative Court’s foregoing grounds to deny the introduction of the consideration of "commercial success" is in conflict with the goal of avoiding hindsight bias as well as the stipulation in the Guidelines that "the patentee’s evidence for supporting secondary considerations shall be considered together with the prior arts."
In contrast to the Supreme Administrative Court's foregoing decision, the 2018 Xing Zhuan Su Zi No. 75 administrative judgment rendered by the IPC on February 14, 2019 recognized the need to introduce "commercial success" as a factor in determining the non-obviousness of a patent. According to the IPC's decision, while the cited prior arts individually disclose some technical features of a patent claim, it is still questionable whether the cited prior arts have the reasonable motivation for PHOSITA to combine the foregoing disclosed technical features. Therefore it is necessary to introduce the secondary considerations for determining non-obviousness in this litigation so as to avoid the hindsight bias caused by the arbitrary subjective determination. Upon a comprehensive trial and consideration of this litigation, the IPC held that the patent in dispute indeed owns non-obviousness based on the “commercial success.” The insight from the IPC's judgment offers a valuable case in point.