Alina Tang January 9 2023 IPCC provides guidance on how to establish whether prior art "teaches away" from claimed invention Lee and Li Attorneys at Law | Intellectual Property - Taiwan Alina Tang Intellectual Property IntroductionBackgroundDecisionCommentIntroductionThe term "teach away" refers to a concept in which the relevant prior art provides a teaching or suggestion which explicitly states or substantially implies that a claimed invention is excluded based on the technical contents disclosed by the citation.The Intellectual Property and Commercial Court (IPCC) recently provided guidance on the determination of whether the substantial contents of the relevant prior art teach away from a claimed invention in a decision concerning a heat sink invention.(1)BackgroundUnder section 18.104.22.168 of the Patent Examination Guidelines, all contents disclosed in the relevant prior art should be considered when the inventive step of a claimed invention is assessed, including whether the relevant prior art teaches away from the claimed invention. To determine whether the relevant prior art teaches away from a claimed invention, the prior art's substantial content must be considered. If the prior art does not teach or suggest the exclusion of the claimed invention, it does not teach away from the claimed invention. It is common for patentees to claim that prior art teaches away from their claimed invention, and thus that such prior art is unable to justify the lack of inventive step of the claimed invention.DecisionIn this case, the IPCC ruled that the technical features of the prior art did not teach away from the patent in dispute, despite the fact that the technical feature of the patent in dispute defined that the material of the heat sink could be changed and the prior art evidence revealed that the materials of the heat sink were all made of copper.The IPCC further explained that to "teach away" means that:the prior art explicitly excludes the combination of known components or provides a teaching or suggestion that the combination of known components is technically incompatible; ora person ordinarily skilled in the art could conduct research to address the same issue but with a means contrary to the inventor's based on the technical contents disclosed in the prior art.However, if the prior art addresses the same issue but with a different technical means, or comprehends the issue differently from the patent in dispute, subjectively speaking, the prior art may not necessarily teach away from the patent in dispute. This is because the content of the prior art does not prevent a person ordinarily skilled in the art from using the inventor's technical means based on the prior art.CommentIn practice, it is common for patentees to claim that the prior art teaches away from their claimed invention, but the courts rarely agree to adopt such claims. When determining whether the prior art teaches away from a claimed invention, the courts judge by the criteria of a person ordinarily skilled in the art – for instance, whether the prior art evidence provides a teaching or suggestion explicitly stating or excluding:the teaching or suggestion of a claimed invention; orthe combination of the relevant technical features of the claimed invention.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(1) 2022 Xing Zhuan Su Zi No. 6.