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IPCC 2022 Ming Zhuan Shang Zi Decision No. 19: Are the criteria for determining "novelty" the same as the criteria for determining "fictitious novelty"?
The criteria for determining "novelty" under Article 22(1) of the Patent Act and the criteria for determining "fictitious novelty" under Article 23 both include the requirement of novelty. It is generally understood that there are two main differences between novelty and fictitious novelty. First, the requirements of the cited prior art of an invention having novelty are not exactly the same as those of an invention having fictitious novelty (that is, the cited prior art of the invention having novelty can be any prior art, while the cited prior art of the invention having fictitious novelty (referred to herein as "the earlier application") is limited to patent applications filed in Taiwan). Second, the timing references related to prior arts used in determining novelty and fictitious novelty are different: when challenging a patent for lack of novelty, the publication date of the prior art should be earlier than the filing date or priority date of the disputed patent application, whereas when challenging a patent on the basis of fictitious novelty, the publication date of the earlier patent application may be later than the filing date of the disputed application, as long as the earlier application's filing date is prior to that of the disputed application (unless the technical content involved has been disclosed in the priority basis of the prior art, in which case the priority date is the standard for determining the order of application). However, apart from such two main differences, are there other differences in the treatment of novelty and fictitious novelty regarding the criteria for substantive comparison with the prior arts?
Regarding the aforementioned question, according to the Patent Examination Guidelines published by the Intellectual Property Office (hereinafter referred to as the Guidelines), an affirmative opinion is taken. In particular, the Guidelines state: "...in determining fictitious novelty, the criteria for determining whether the 'same content' exists in the prior art, in addition to the criteria listed in Chapter 2.4 'Criteria for Determining Novelty,' include (1) complete identification of the content, (2) differences only in the written form or in technically disclosed features that can be directly and unambiguously known, (3) differences only in the hierarchical concept of corresponding technical features, and (4) differences that can be directly replaced by common knowledge. Criterion (4) refers to situations where the difference between the patent application and the prior art lies only in some technical features, and those technical features can be directly replaced by a person skilled in the art based on common knowledge..." (current Guidelines, pages 2-3-13). In other words, according to the criteria set forth in the Guidelines, the criteria for determining "fictitious novelty" includes reference to "differences that can be directly replaced by common knowledge." This represents an expansion of the concept of "novelty."
Concerning the determination of "inventive step" under the Guidelines, several factors negating inventive step are listed in Section 3.4.1, including "simple modification" (Section 3.4.1.2). The term "simple modification" implies that if the difference between the claimed invention and the single-cited prior art can be easily achieved by a person skilled in the art using common knowledge at the time of filing, such as by simply modifying, replacing, omitting, or utilizing other technical features in the field of the claimed invention based on common knowledge and ordinary skill, then the invention shall be considered a simple modification of the single-cited prior art. Thus, according to the Guidelines, if the difference between the cited prior art and the claimed application can be achieved by "simple replacement," the invention is deemed to lack inventive step. Does the criterion of "direct replacement based on common knowledge" in the determination of "fictitious novelty" actually go beyond the scope of "novelty" and touch upon the domain of inventive step? This remains uncertain.
The Ming Zhuan Shang Zi Decision No. 19, issued by the IPCC on April 20, 2023, presents a point of view regarding the legislative purpose, foreign legislative examples, and text content of the Patent Act concerning the criteria for determining "fictitious novelty." Such Decision holds the view that the criteria for determining "fictitious novelty" should be different from those for determining "novelty" and supports the standardization of examination criteria. The IPCC's point of view in such Decision can be summarized as follows:
1. The legislative history of Article 23 of the Patent Act, which pertains to "fictitious novelty," indicates that the legislature has expanded the effectiveness and scope of excluding subsequent applications based on prior applications. It also assigns a normative purpose and function to fictitious novelty that are different from those of novelty. Therefore, it is evident that this provision has its own legal position, normative meaning, and function. Consequently, it is not appropriate to interpret and apply Article 23 solely based on the concepts and practices of novelty. Furthermore, Article 23 includes provisions not found in the novelty requirement, such as "except where the applicant(s) of the present application is(are) the same as the applicant(s) of such prior invention or utility model patent application." The interpretation and application of this provision do not necessarily align with the requirements of novelty.
2. The laws of Japan and South Korea, which are similar to Article 23 of the Taiwan Patent Act, both adopt the principle of "expanded novelty." Even if the invention claimed in a subsequent application is not fully disclosed in the specification of the prior application, the subsequent application may still be unpatentable. For example, if there are differences between the invention of the prior application and the invention of the subsequent application, but these differences are minor and can be directly known by utilizing the general common knowledge in the relevant technical field or by a person skilled in the art using their common knowledge and ordinary skill, the invention of the subsequent application may be deemed unpatentable.
3. Article 23 of the Patent Act includes: “Where the contents of an invention claimed in a patent application are identical to the contents described in the specification or drawings submitted along with an application for invention or utility model patent that is filed prior to but is laid open or published after the filing of the present patent application (...).” This means that the comparison between the prior and subsequent applications is not limited to exact textual matches. Thus, even if there are formal differences, if the substance is the same, the contents of the subsequent application will be deemed as within the concept of "identical to the contents" of the prior-filed patent. Based on this, the examination criteria in Taiwan include "differences that can be directly replaced by common knowledge" as one of the criteria for determining "identical to the contents" under Article 23 of the Patent Act. This criterion does not exceed the scope of the novelty requirement, and the concept of "direct replacement" differs significantly from the concept of "easily accomplished by a person skilled in the art based on prior art" in the inventive step requirement. Therefore, there is no justification for the appellant's claim that the concept of inventive step is inappropriately introduced into the determination of novelty.
This judgment confirms that the substantive criteria for determining "fictitious novelty" differ from those used for determining "novelty" and do not fall within the scope of inventive step. However, in practical application, further accumulated insights are required from the Intellectual Property Office and the courts through case law to distinguish between the concepts of "direct replacement" (pertaining to "fictitious novelty") and "simple substitution" (pertaining to "inventive step").