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Criteria for Determining the Relation or Similarity among Technical Contents in Examining the Inventive Step
As per Paragraph 2, Article 22 of the Patent Act, an invention that is without the circumstances prescribed in Paragraph 1, Article 22 of the Same Act but can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented, which is the relevant provision of the Patent Act on the "Inventive Step." In practice, when it comes to the examination of the inventive step, the determination generally rely on the combination of multiple prior art references (citations). And it should also be put into consideration whether such combination is explicit to a person ordinarily skilled in the art.
Is such combination explicit to a person ordinarily skilled in the art? Does the combination thereby allow person with such skills referred by the case below to easily accomplish the invention in dispute based on the technical contents disclosed in a combination of multiple prior art references, as well as common general knowledge at the time of filing? To such concerns, as the Supreme Administrative Court rendered in the 2018 Pan Zi No. 647 judgment, when determining an inventive step, the examiner shall evaluate whether a person ordinarily skilled in the art would have “motivation” to combine the technical contents of multiple prior art references so as to accomplish the claimed invention. The Supreme Administrative Court concluded that, if there is a motivation to combine the prior art references, there exists a factor that negates the inventive step. As for determining whether a person ordinarily skilled in the art would have the motivation to combine the technical contents of multiple prior art references, the key that should be taken into consideration is the relation or similarity among the technical contents of multiple prior art references. In the recent 2021 Xing Zhuan Su Zi No. 41 administrative judgment, the Intellectual Property and Commercial Court further purported that, when determining an inventive step in evaluating whether there is motivation to combine the technical contents of multiple prior art references, the examiner shall consider the “relation or similarity” among the technical contents of “prior art references,” rather than the relation or similarity between the technical contents of the prior art references and those of the “claimed invention in dispute.”
It should be noted that, even if the technical contents of multiple prior art references are deemed relevant in practice, usually it shall not be directly inferred that that a person ordinarily skilled in the art would have the motivation to combine the prior art references. In principle, to comprehensively determine whether such motivation exists, what must be looked for and taken into consideration in the technical contents of multiple prior art references includes issues of similar nature to be solved, operations or functions of similar nature, or instructions or suggestions documented or implied about how to combine different technical contents of multiple citations.