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Supreme Administrative Court Affirms Investigation about Expert Witness and Consideration of Auxiliary Factors during Inventive Step Reviews of Patents in 2021-Shang-Zi No. 597 Judgment
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, the essence of inventive step determination as to a patent is to determine whether the patented invention can be easily completed by a person ordinarily skilled in the art based on prior art. As to the investigation and confirmation of the technical level of persons ordinarily skilled in the art as of the filing of a patent application, there may be cases in practice where a patentee petitions or hopes in vain for a court investigation about an expert witness.
In this regard, the Supreme Administrative Court ruled in its 2021-Shang-Zi No. 597 Judgment issued on October 13, 2022 that the original court reached a conclusion unfavorable to the patentee in the absence of an investigation about the expert witness and reasonable explanations therefor, constituting a violation by failing to conduct an ex officio investigation of evidence and making an error by rendering a groundless judgment. The Supreme Administrative Court states as follows: “Appellant argued repeatedly at the original court that only with a comprehension of the technical perceptions of persons ordinarily skilled in the art 20 years ago, could the court make an accurate inventive step determination, because the patent at issue involved a technique that was uncommon and esoteric more than 20 years ago, and current technicians knew little and had great difficulty understanding it. Therefore, Appellant hoped to invite a technical expert who personally experienced the technical innovation more than 20 years ago and has now achieved considerable standing in the industry as an expert witness to clarify the technical perceptions and truth back to those days…In addition, given that Appellant and Intervener were also involved in a civil infringement lawsuit disputing over the validity of the patent at issue, Appellant therefore requested the adoption of its claims in the civil case as evidence at the original court…According to the transcripts of the preparatory proceeding of the civil case dated February 25, 2019, as enclosed with the documentation of the original judgment, Appellant petitioned to subpoena Lu, Wei-Fan as witness to clarify the technical level of persons ordinarily skilled in the art as of the filing date of the patent at issue…According to the foregoing requirement and explanations, as Appellant’s arguments interferes with an inventive step determination with respect to the patent at issue, the original court should investigate and figure out the issue. However, the original court neither conducted any investigation nor explained why Appellant’s argument was rejected before rendering a judgment unfavorable to Appellant. Therefore, the original court violates the law because it failed to conduct an ex officio investigation of evidence, and makes an error by issuing a groundless judgment.”
According to the Supreme Administrative Court, a further violation is established when the original court rendered a determination unfavorable to the patentee in the absence of any investigations into the patentee’s evidence and arguments supporting auxiliary factors. The Supreme Administrative Court ruled as follows: “Appellant argued repeatedly at the original court that the patent at issue was granted in Britain, the U.S., China and Japan respectively more than 20 years ago; Taiwanese voice recognition integrated circuit (IC) companies which assessed the contents of the patent at issued and became ones of its licensees included listed companies such as… Relying on the patented technique, these licensees exported ICs worth billions of dollars, adequately evidencing that the patent at issue solved a long-standing problem and became a commercial success…According to the above explanations and general experiences of reasoning, Appellant’s petition does not seem to be completely unfounded and it does interfere with an inventive step determination as to the patent at issue. Appellant’s arguments in satisfaction with the requirements for auxiliary factor include that the patented invention had an unexpected effect, solved a long-standing problem, addressed technical bias, and achieved a commercial success… A comprehension of the technical perceptions back to more than 20 years ago is needed in order to make a correct determination. In the absence of any thorough investigations, however, the original court denied the presence of auxiliary factors and proceeded to render a judgment unfavorable to the patentee. In addition to going against the rules of reasoning and experience, the original court also violated the law by failing to conduct an ex officio investigation of evidence.”
The Supreme Administrative Court’s ruling over the patent involved in No. 597 Judgment is the same as the Supreme Court’s ruling over the patent involved in the 2022-Tai-Shang-Zi No. 186 Judgment. In the latter judgment, the Supreme Court holds that, with respect to review of a patent’s inventive step, the original court should conduct an investigation about the expert witness requested by the patentee, in order to learn about the technical level as of the filing date of the patent at issue before making inventive step determination. The Supreme Court also holds that the evidence and arguments presented by the patentee with regard to auxiliary factors should be considered and evaluated. However, it remains to be seen and checked whether the aforesaid two judgments will bring revolutionary changes to court reviews on patent validity in future patent invalidation administrative litigations and patent infringement civil litigations.