Although the courts of many jurisdictions have frequently considered hindsight bias when reviewing the issue of inventive step, the Taiwan Supreme Administrative Court (TSAC) has seldom discussed the meaning of hindsight and has rarely applied this concept to revoke judgments of the IP Court or the Taiwan Intellectual Property Office (TIPO). However, the TSAC recently issued two judgments (June 1 2015 and August 13 2015) revoking two IP Court judgments which concluded that the subject patents were invalid because they were made with impermissible hindsight. As a result, these judgments are noteworthy and are expected to have a significant impact on patent practice in Taiwan.

The Patent Act provides that a patent cannot be granted if an invention can be made easily by a person with ordinary skill in the art based on prior art. This is a core element of the inventive step requirement in the Patent Act. When challenging a patented invention on the grounds that it fails to satisfy the inventive step requirements, a combination of prior art is usually used and all the technical features between the patent and prior art are verified. The IP Court and TIPO do not usually ask the party seeking invalidation to explain in detail who the person skilled in the art is and why he or she has combined the prior art. The TSAC has previously held that before using a combination of prior art to challenge a patent, certain questions must be answered in order to avoid any hindsight bias. These TSAC judgments are considered below.

TSAC decision Pan-Zi 308 of 2015 (June 1 2015)

In this case the TSAC held that in order to prevent a ruling being made in hindsight, when determining the inventive step issue, the court must define the level of knowledge of the person with ordinary skill in the art. In addition, even if all of the components of an invention have been disclosed in several examples of prior art, the court still cannot directly conclude a lack of inventive step. Instead, the court must investigate and determine whether there are any concrete reasons why the person with ordinary skill in the art can make the patented invention easily. The original judgment had concluded that the subject invention could easily be made by a person with ordinary skill in the art without clarifying or identifying the difference between the patent at issue and the invalidation evidence, and without explaining how that person could make the invention easily. Therefore, the original judgment was revoked for lack of sufficient reason.

TSAC decision Pan-Zi 452 of 2015 (August 13 2015)

This decision not only restated the issue considered above, but also identified the means of reviewing the difference between the invention in dispute and the evidence of prior art. The TSAC further observed that when determining whether the differences between the invention and the invalidation evidence can be identified easily by transferring, replacing, changing or combining these according to the prior art, it constitutes impermissible hindsight if a conclusion is made merely by following the progressive and lucid method set out in the patent specification and drawings. Instead, in order to achieve an objective judgment, the court must review the invention at issue as a whole, while comparing it to the prior art citations, and must consider the perspective of a person ordinarily skilled in the art at the time when the patent application was filed. The IP Court’s original judgment that the combination itself could prove that the patent claims lacked inventive step was inappropriate. Rather, the TSAC held that the original judgment did not discuss the claimed feature and failed to investigate and identify which technical characteristics disclosed in evidence could be transferred or exchanged with equal effectiveness, or could suggest that the feature was easily made.

Comment
According to the two TSAC decisions, impermissible hindsight has become an important issue when challenging the inventive step requirement. As a result, the IP Court has begun to apply these decisions and investigate how the person ordinarily skilled in the art is motivated to combine the technical features indicated in invalidation evidence. Further, as the party petitioning for invalidation bears the burden of proving the technical features combined in the disclosed citations, it will be increasingly difficuly to invalidate a patent successfully.

Another important issue is TIPO’s attitude to this issue. It will be interesting to see whether impermissible hindsight becomes a strong argument against the rejection of inventive step in patent prosecutions. The TSAC has finally discussed substantively the identity of the person ordinarily skilled in the art.

Yulan Kuo, Charles Chen

This article first appeared in IAM. For further information please visit www.iam-media.com.