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Thresholds and Criteria for Teaching Away in Determining Inventive Step of a Claimed Invention
Under section 3.4.2.1 of the current Patent Examination Guidelines, all contents disclosed in the relevant prior art should be taken into consideration when the inventive step of a claimed invention is determined, including whether the relevant prior art teaches away from the claimed invention. The term "teach away" refers to a concept in which the relevant prior art provides a teaching or suggestion which explicitly states or substantially implies that a claimed invention is excluded based on the technical contents disclosed by the citation. To determine whether a relevant prior art teaches away from a claimed invention, decisions must be made based on the substantial contents of the relevant prior art. If the prior art does not teach or suggest to exclude the claimed invention, then it does not teach away from the claimed invention. Regarding the determination of inventive step of a claimed invention in practice, it is common for a patentee to claim that the prior art teaches away from his/her claimed invention, and thus such a prior art is unable to justify the lack of inventive step of the claimed invention.
Concerning the determination of whether the substantial contents of the relevant prior art teach away from a claimed invention, the Intellectual Property and Commercial Court (IPCC) has already stated its opinion in the 2022 Xing Zhuan Su Zi No. 6 decision. The IPCC ruled that, although the technical feature of the patent in dispute defines that the material of the heat sink can be changed, and the evidences of the prior arts reveal that the materials of the heat sink are all made of copper, yet the technical feature of the prior arts does not teach away from the patent in dispute. “To teach away,” as the IPCC further explained, means that the prior art explicitly excluded the combination of known components or provided a teaching or suggestion that the combination of known components is technically incompatible; or that a person ordinarily skilled in the art would conduct research to address the same issue but with a means contrary to the inventor’s based on the technical contents disclosed in the prior art. However, if the prior art aimed to address to the same issue but with a different technical means, or comprehended the issue differently from the patent in dispute subjectively speaking, the prior art may not necessarily teaches away from the patent in dispute. That’s because the contents of the prior art does not prevent a person ordinarily skilled in the art from taking the inventor’s technical means of the prior art.
In practice, it is common for patentees to claim that the prior art teaches away from his/her claimed invention, but rarely do courts agree to adopt such claims. When determining whether the prior art teaches away from a claimed invention, the courts judge by the criteria of a person ordinarily skilled in the art, for instance, whether the evidence of the prior art provides a teaching or suggestion explicitly stating or excluding that the teaching or suggestion of a claimed invention, or whether the relevant technical features of the claimed invention cannot be combined, etc.