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Amendments to Patent Examination Guidelines on Inventive Step Assessment: A More Refined Approach to Determining Whether “Motivation to Combine Multiple References” Exists

The issue of “whether persons having ordinary skill in the art would be motivated to combine multiple references” has always been an important factor in inventive step assessment.  The latest amendments to the Patent Examination Guidelines (“Guidelines”), which came into force on 1 July 2017, provide more comprehensive rules on how to determine the existence of “motivation to combine.”


The previous Guidelines listed four factors for determining whether there is “motivation to combine”: (1) technical fields; (2) technical problems to be solved; (3) functions or effects; and (4) teachings or suggestions.  This four-factor approach previously focused on whether the claimed invention is in some way related to the cited references (factors (1), (2) and (3)), or whether the cited references explicitly or implicitly include teachings about the claimed inventions that would make the motivation to combine the cited references obvious (factor (4)).  Although the four factors are still included in the amended Guidelines, the rules on how to compare the claimed invention and the cited references have been amended to provide clearer guidance on how to evaluate these factors.


Regarding factor (1), the amended Guidelines provide that “the mere fact that the cited references pertain to related fields is usually not sufficient to support the finding that persons having ordinary skill in the art would be motivated to combine the cited references,” and request that other factors should also be considered.  This not only raises the bar for challenging the inventiveness of an invention, but also avoids the situation of making a finding of lack of inventive step mainly on the basis that “the technical fields of the cited references are related,” which was common before the introduction of the latest amendments to the Guidelines.


Regarding factors (2) and (3), the Guidelines previously required the examiners to consider the “relationship” between the cited references and the claimed invention, but the Guidelines now require the examiners to consider the “commonality among the multiple references” and clearly define “commonality” to mean “solving substantially the same problem(s)” or “having substantially the same function(s) or effect(s).”  In other words, the “commonality” must exist “among the multiple references,” not “between the multiple references and the claimed invention.”  Moreover, the commonality standard requires that the technical problems to be solved or the functions or effects are “substantially the same.”  Thus, the “commonality” standard is more specific than the “relationship” standard. 


Regarding factor (4), the previous standard looked at whether the cited references explicitly or implicitly provide teachings or suggestions “about the claimed invention.”  The new standard, in contrast, looks at whether the cited references explicitly or implicitly teach or suggest “combining the technical features of different references.”  In other words, the examiners are now required to find in the cited references a teaching or suggestion to “combine different references,” which is a more specific requirement than the requirement of finding teachings or suggestions “about the claimed invention,” and effectively asks the examiner to demonstrate a much deeper understanding of the cited references.


By setting a higher standard for establishing motivation to combine multiple references and providing a more refined approach to determining whether such motivation exists, the amended Guidelines are expected to improve the quality of patent examination in Taiwan.