Hsiu-Ru Chien Elina Yu January 2 2023 Conflicting practice on determination of PHOSITA in patent litigation proceedings Lee and Li Attorneys at Law | Intellectual Property - Taiwan Hsiu-Ru Chien, Elina Yu Intellectual Property IntroductionCourt should clarify knowledge level of PHOSITACourt's inventive step determination concretises technical capability of PHOSITA Recent caseCommentIntroductionArticle 22 of the Patent Act stipulates as follows: "An invention that . . . can be easily made by a person ordinarily skilled in the art based on prior art shall not be patented." Accordingly, "whether an invention can be easily made by a person ordinarily skilled in the art (PHOSITA) based on prior art" is at the core of the determination as to whether an invention patent has an inventive step.As the foregoing means of judgment is established from the perspective of a PHOSITA, it is conceivable that the level of technical skill set for the PHOSITA will, to a considerable extent, affect the determination of "whether the invention patent at issue can be easily completed". In patent litigation practice, however, there is still doubt as to whether a court's judgment constitutes a violation due to a "lack of grounds" if the court rules over the inventive step of the invention patent at issue and yet fails to specifically explain the knowledge level or technical skill of the PHOSITA.With respect to the above issue, the Supreme Administrative Court has expressed contradictory opinions. This article summarises its views.Court should clarify knowledge level of PHOSITAOn 29 September 2016,(1) the Supreme Administrative Court held that the lower court's judgment constituted a violation due to a lack of grounds since it had failed to state the knowledge level of the referenced PHOSITA. For this reason, the Court nullified and remanded the lower court's judgment. Its reasoning was as follows:"A person ordinarily skilled in the art" is an important element in an objective determination of the presence of an inventive step.Under the patent legal system, with respect to a conventional technical field or a technical field with results that may be anticipated, the criterion defined by "a person ordinarily skilled in the art" is generally understandable immediately after prior art references are given. However, for technical fields that involve advanced techniques, techniques to be developed, combined techniques or technical fields with results that may not be anticipated, the administrative agency should construe the uncertain legal concepts in advance before they are put into concrete applications, especially when the parties involved are in dispute about such concepts.In the lower court's judgment, the technical features of the patent at issue were compared and explained from the perspective of a person who knows the art well (ie, a person ordinarily skilled in the art). The appellant questioned repeatedly in the original trial how "a person ordinarily skilled in the art" was defined, and yet the original judgment failed to clarify the technical level of that person as of the filing date of the patent at issue. Accordingly, the lower court's judgment constituted a violation due to a lack of grounds.When judging the inventive step of an invention, the Intellectual Property Court should clarify in advance the knowledge level of "a person ordinarily skilled in the art" based on:the major technical field of the patent at issue;the problems faced by prior art;solutions to the problems;the complexity of the technique; andthe ordinary level of the practitioners in the art.Court's inventive step determination concretises technical capability of PHOSITAOn 29 April 2021,(2) however, the Supreme Administrative Court asserted that the PHOSITA is an imaginary character and does not exist in real life. Thus, its technical capability must be concretised by external evidence.According to the Court, in patent litigation practice, the technical classification of the patent at issue and the technical level of the technique as of the filing date of the patent at issue are sufficient to concretise the capability of the PHOSITA. Further, the ruling court's inventive step determination, to a certain extent, also serves to concretise the technical capability of the PHOSITA. If the court's arguments do not violate the laws of experience, the laws of reasoning or natural laws, it is hard to assert that the ruling court has failed to define the knowledge level of the PHOSITA.In the second case, the Supreme Administrative Court seemed to opine that the prior art references disclosed during the litigation process indicated the knowledge level of the PHOSITA and that the ruling court could hardly be deemed to not comply with the law even if a specific definition of the technical level of the PHOSITA was absent from its judgment. The Court affirmed this stance in various other cases.(3)Recent caseOn 20 July 2022,(4) the Supreme Court adopted the first view, holding that the technical level of a PHOSITA should be confirmed when the inventive step of an invention is determined. Otherwise, the judgment would constitute a violation as a result of "non-applicable laws and inappropriate application of laws" and a "lack of grounds".According to the Supreme Court, when a determination is to be made as to whether an invention patent can be readily completed by a person ordinarily skilled in the art using existing techniques or knowledge available prior to the filing date of the invention patent, it is important to determine the technical level of the person ordinarily skilled in the technical field to which the patent at issue pertains.The appellant argued that the technical terms of the patent at issue should be construed based on the opinions of persons of ordinary skill in the same technical field as of the filing date of the invention patent. Further, it was necessary to have persons ordinarily skilled in the art more than 20 years ago as expert witnesses to clarify various techniques.According to the Court, the technical level of the PHOSITA had to be confirmed after investigation since it would affect the inventive step determination. However, the lower court's judgment had failed to explain why the appellant's argument was not adopted and why investigation was unnecessary. The judgment had also failed to determine who would know the technique well.Therefore, the step of "determining the technical level of a person ordinarily skilled in the art" was missing from the judgment. The determination that the claims at issue were devoid of an inventive step was thus groundless, and the Court also raised the issues of non-applicable laws and inappropriate application of laws.CommentIt remains to be seen whether the Supreme Court's view becomes a stable consensus among courts in practice in the future.For further information on this topic please contact Hsiu-Ru Chien or Elina Yu at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.Endnotes(1) 2016 Pan Zi No. 503.(2) 2020 Shang Zi No. 300.(3) See:2020 Shang Zi No. 575 judgment rendered on 30 July 2021;2020 Shang Zi No. 343 judgment rendered on 10 February 2022; and2020 Shang Zi No. 33 judgment rendered on 24 February 2022.(4) 2022 Tai Shang Zi No. 186.