Under article 22(2) of the Patent Act, an invention that can be made easily by a person ordinarily skilled in the art based on prior art may not be patented. This is known as the "inventive step" provision. In practice, the examination of the inventive step generally relies on the combination of multiple prior art references. It should also be considered whether such combination would:
- be explicit to a person ordinarily skilled in the art; and
- enable the person skilled in the art to accomplish the invention easily.
In this regard, the Supreme Administrative Court has held that when assessing the inventive step, the examiner should evaluate whether a person ordinarily skilled in the art would have "motivation" to combine the technical contents of multiple prior art references so as to accomplish the claimed invention.(1) The Court concluded that if there is motivation to combine the prior art references, the inventive step is negated.
To determine whether such motivation would exist, the relation or similarity of the technical contents of the prior art references should be considered. The Intellectual Property and Commercial Court recently clarified that, in particular, the examiner should consider the "relation or similarity" between the technical contents of the "prior art references", rather than the relation or similarity between the technical contents of the prior art references and those of the "claimed invention in dispute".(2)
Even if the technical contents of the multiple prior art references are deemed to be relevant, it will usually not be directly inferred that that a person ordinarily skilled in the art would have the motivation to combine them. In principle, to comprehensively determine whether such motivation exists, the examiner should look for:
- issues of a similar nature to be solved;
- operations or functions of a similar nature; or
- documented or implied instructions or suggestions regarding how to combine different technical contents of multiple citations.
For further information on this topic please contact Alina Tang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected]). The Lee and Li website can be accessed at www.leeandli.com.
Endnotes