Home >> News & Publications >> Newsletter

Newsletter

搜尋

  • 年度搜尋:
  • 專業領域:
  • 時間區間:
    ~
  • 關鍵字:

The Need for a Specific Definition of PHOSITA Affirmed for Determining Inventive Step in the Supreme Administrative Court’s 2022 Tai Shang Zi No. 186 Decision



Article 22 of the Patent Act stipulates that “An invention that…can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented.”  Accordingly, “whether an invention can be easily made by a person ordinarily skilled in the art (PHOSITA) based on prior art” is at the core of the determination as to whether an invention patent has an inventive step.  As the foregoing means of judgment is established from the perspective of a PHOSITA, it is conceivable that the level of technical skill set for the PHOSITA will, to a considerable extent, interfere with the determination on “whether the invention patent at issue can be easily completed.”  In patent litigation practice, however, there is still doubt as to whether a court’s judgment constitutes a violation due to a “lack of grounds” if the court rules over the inventive step of the invention patent at issue and yet fails to specifically explain the knowledge level or technical skill of the PHOSITA.  With respect to the above issue, the Supreme Administrative Court once expressed contradictory opinions, and its views are summarized as follows.

 

I. Holding that the court should clarify the knowledge level of the PHOSITA

 

According to the 2016 Pan Zi No. 503 Judgment rendered by the Supreme Administrative Court on 29 September 2016, the Supreme Administrative Court indicated that the original judgment constituted a violation due to a lack of grounds since it failed to specifically state the knowledge level of the referenced PHOSITA.  For this very reason, the Supreme Administrative Court nullified and remanded the original judgment.  An excerpt of the Supreme Administrative Court’s logic principles is provided as follows.

 

1.        Among the means of judgment for inventive step, “a person ordinarily skilled in the art” is an important element in an objective determination on the presence of an inventive step.

2.        With respect to the patent legal system, in terms of a conventional technical field or a technical field with anticipatable results, the criterion defined by “a person ordinarily skilled in the art” is generally understandable immediately after prior art references are given.  However, for technical fields involving advanced techniques, techniques to be developed, interleaving techniques, or technical fields with results that are hardly anticipatable, the administrative agency should construe the uncertain legal concepts in advance before they are put into concrete applications, especially when the parties involved have disputes thereon.

3.        In the original judgment, the technical features of the patent at issue were compared and explained from the perspective of a person who knows the art well (ordinarily skilled in the art).  The appellant questioned repeatedly in the original trial how “a person ordinarily skilled in the art” was defined, and yet the original judgment still failed to clarify the technical level of that person as of the filing date of the patent at issue.  Accordingly, the original judgment constituted a violation due to a lack of grounds.

4.        When judging over inventive step, the Intellectual Property Court should clarify in advance the knowledge level of “a person ordinarily skilled in the art” based on the major technical field of the patent at issue, the problem(s) faced by prior art, solution(s) to the problem(s), complexity of the technique and the ordinary level of the practitioners in the art.

 

II. Holding that the court’s argumentation on inventive step, to a certain extent, concretizes the technical capability of a person ordinarily skilled in the art

 

In the 2020 Shang Zi No. 300 judgment rendered by the Supreme Administrative Court on 29 April 2021, however, the Supreme Administrative Court asserted that “A person who has ordinary skill in the art” (PHOSITA) was a virtual character and did not actually exist in real life.  Thus, its technical capability had to be concretized by external evidence.  In patent litigation practice, the technical classification of the patent at issue and the technical level of the technique as of the filing of the patent at issue were sufficient to concretize the capability of the aforesaid virtual character…The ruling court’s argumentation on inventive step, to a certain extent, concretized the technical capability of the PHOSITA.  If the court’s arguments did not violate the laws of experience, the laws of reasoning or natural laws, it is hard to assert that the ruling court failed to define the knowledge level of the PHOSITA.  In view of the above, the Supreme Administrative Court seems to take the view that the prior art references disclosed during the litigation process have indicated the knowledge level of a PHOSITA, and the ruling court can hardly be deemed not in compliance with the law even if a specific definition of the technical level of the PHOSITA is absent from its judgment. The same stance of the Supreme Administrative Court is affirmed by its 2020 Shang Zi No. 575 judgment rendered on 30 July 2021, 2020 Shang Zi No. 343 judgment rendered on 10 February 2022 and 2020 Shang Zi No. 33 judgment rendered on 24 February 2022.

 

The Supreme Court adopted the first view in its 2022 Tai Shang Zi No. 186 judgment rendered on 20 July 2022, holding that the technical level of a PHOSITA should be confirmed when the inventive step of an invention is determined.  Otherwise, the judgment would constitute a violation as a result of “non-applicable laws and inappropriate application of laws” and a “lack of grounds. According to the Supreme Court, when a determination is to be made as to whether an invention patent can be readily completed by a person ordinarily skilled in the art using existing techniques or knowledge available prior to the filing date of the invention patent, the following steps should be followed: … determining the technical level of the person ordinarily skilled in the technical field to which the patent at issue pertains; … the appellant argued that the technical terms of the patent at issue should be construed based on the opinions of persons of ordinary skill in the same technical field as of the filing date of the invention patent.  It was necessary to have persons ordinarily skilled in the art more than 20 years ago as expert witnesses to clarify various techniques …In accordance with the above provision and explanation, the technical level of the PHOSITA should be confirmed after investigation since it interfered with the determination on inventive step.  However, the original judgment did not explain why the appellant’s argument was not adopted and why investigation was unnecessary.  Besides, the judgement does not determine who knew the technique well.  Therefore, the step of “determining the technical level of a person ordinarily skilled in the art” was missing from the judgment.  In such situation, the determination that the claims at issue were devoid of an inventive step was groundless, in addition to the issues of non-applicable laws and inappropriate application of laws.  Nevertheless, it remains to be observed whether the Supreme Court’s view becomes a stable consensus among courts in practice in the future.

 

回上一頁