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Prior Art Known to the Applicant is not Necessarily Common General Knowledge at the Time of Filing the Patent Application
To determine the validity of a patent, it is often necessary to determine the technical ability of a person ordinarily skilled in the art so as to ascertain whether the claimed invention can be easily accomplished, or whether the specification meets the requirements of definiteness and full disclosure (see Article 22, Paragraph 2 and Article 26, Paragraph 1 of the Patent Act).
In practice, the so-called person “ordinarily skilled in the art” refers to a hypothetical person having “general knowledge” and “ordinary skill” in the art of the claimed invention at the time of filing. “General knowledge” includes well-known knowledge in the art as disclosed in textbooks or reference books and also includes information commonly used and items which can be understood from rules of thumb. “Ordinary skill,” on the other hand, means the ordinary ability to perform routine work and experiments. Consequently, general knowledge and ordinary skill at the time of filing are called the “common general knowledge at the time of filing” (see Article 14 of the Enforcement Rules of the Patent Act, and Part II, Chapter 2, Section 2.3 of the Guidelines for Determination of Patent Infringement).
Nevertheless, can the "prior art" (prior art known to the applicant) specified by the patentee in the specification be considered common general knowledge at the time of filing? Furthermore, is it possible to determine the technical ability of a person ordinarily skilled in the art through the prior art specified in the specification?
The Supreme Administrative Court explicitly took a negative stance in its 2021 Shang Zi No. 172 judgement. “Although the Taiwan 0000000 and 0000000 invention patents were specified in the ‘prior art’ paragraph on pages 4 and 5 of the patent at issue,” as the court states, “the contents specified indicate that the two cited invention patents are the prior art that the patent at issue intends to improve. Since they are not textbooks or reference books but prior art only in nature, it is hard for the prior art to be considered common general knowledge at the time of filing the application of the patent at issue. The appellant has a misunderstanding that the two patents are known technologies only because they are recorded in the specification of the patent at issue.”
In view of the above, even if the patentee states in the specification that the particular prior art is well known, whether it is the common general knowledge of a person ordinarily skilled in the art, in pursuance of the aforementioned determination criteria of general knowledge and ordinary skill, must still be objectively determined.