A Supreme Administrative Court decision (2016 Pan Zi 503 Judgment), rendered on 29 September 2016, addressed the knowledge and technical level of a person having ordinary skill in the art (PHOSITA). The court had reversed the original judgment and remanded the case back to the Intellectual Property Court, which was ordered to:

establish the knowledge level of 'a PHOSITA' based on the technical field of the patent at issue, the problems encountered by prior technology, the methods to resolve these problems, the complexity of the technology and the ordinary level of practitioners.

The Supreme Administrative Court emphasised that:

in this case, the appellant repeatedly disputed the definition of 'a PHOSITA' in the original trial, but the original judgment arbitrarily concluded that a PHOSITA could easily come up with the means for managing 'a vehicle leaving a parking lot' without clarifying the technical level of a PHOSITA before the filing date of the patent at issue, and is therefore meritless.

Following the retrial, the Intellectual Property Court made a rare announcement on its website to invite amicus briefs.

The Intellectual Property Court's decision (2016 Hsing Zhuan Ghun (1) Zi 4 Administrative Judgment) was rendered on 31 May 2018 and diverged from the Supreme Administration Court's judgment.

Intellectual Property Court's reasoning

First, the Intellectual Property Court opined that, in principle, a PHOSITA's knowledge and technical level are implicit in the specific comparative analysis of the technical features of the cited references (ie, no additional definition is required).

A PHOSITA's knowledge and technical level on the patent's filing date are implicit in the patent examination authority's or the courts' specific accounts and thus do not require an additional definition if the following conditions are met:

  • the parties have no dispute over the cited reference to the existing prior art, but only over whether:
    • all of the patent's technical features have been disclosed in the cited references; and
    • the difference between the patent at issue and the cited references could be easily completed; and
  • the patent examination authority can:
    • clearly identify how the cited references disclose all of the patent's technical features in its rejection decision; and
    • explain how a PHOSITA would easily complete all of the patent's technical features based on the existing cited references for the examination by a third party, including a court.

Second, the court held that the examination of a PHOSITA's knowledge and technical level is considered substantial only when the parties raise a claim thereon and if such a determination would affect the judgment.

Therefore, if the parties make any claim about a PHOSITA's technical level and further claim that such technical level may affect whether the specific knowledge or technology could be a cited reference, the patent authority must clearly identify and explain whether such specific knowledge or technology could be accessed or learned by a PHOSITA. If so, the PHOSITA's knowledge or technical levels are likely to be explicitly defined – only in this situation would it be meaningful for an examination of non-obviousness to first define a PHOSITA's knowledge or technical level. If not, it is non-substantial or merely symbolic to simply define a PHOSITA's knowledge or technical level if no specific limitation or preclusion to the cited references would be triggered.

Third, the court declared that even if the parties agree on a PHOSITA's technical level, the court is not necessarily bound by such consensus. Determining a PHOSITA's technical level requires both factual recognition and the determination of legal issues.

In terms of factual recognition, the court should consider the parties' full debates and the results of the investigation to identify the facts based on empirical law and rule of thumb. When parties disagree over whether a technology can be accessed or learned by a PHOSITA, this is essentially equivalent to a dispute regarding said PHOSITA or their technical level on the patent's filing date.

The investigation and determination of such a disagreement is similar to process for concluding a general factual dispute, in which both parties and the interveners should provide evidence for their arguments in order to provide sufficent grounds for the court to render a judgment. Therefore, with regard to the same patent in different cases or proceedings, since the parties' supporting evidence may differ across cases or proceedings, the courts will likely render different decisions for a PHOSITA and the technical level thereof.

As the Patent Act sets out the grounds to deny patent rights based on lack of non-obviousness, parties which fail to provide sufficient evidence for the court to identify the facts should receive unfavourable judgments.

Further, Article 134 of the Code of Administrative Procedure explicitly states that "although a fact alleged by a party has been admitted by the opposing party, the administrative court shall still investigate other necessary evidence". Therefore, even if the parties agree on a PHOSITA and their technical level on the relevant patent's filing date, the administrative court is not necessarily bound by such a consensus.

Moreover, the definitions of 'PHOSITA' and 'technical level' include not only factual recognition, but also the determination of certain legal issues which should be interpreted by the courts – for example:

  • Can a PHOSITA be a group of people having various technological abilities and coming from multiple technical fields?
  • Is a PHOSITA capable of a certain degree of creation and invention, or can they only combine different prior arts to complete the invention based on the specific instructions from the prior arts?

To maintain consistency in legal interpretation, such legal issues should not be decided by party consensus.


Since the plaintiff had neither claimed that Exhibit 1 or Exhibit 3 should be excluded from the prior arts that could be accessed or learned by a PHOSITA nor explained why a PHOSITA would be unable to access or learn the prior art disclosed in those exhibits if such person is defined as "a practical engineer engaged in the parking-lot charge management system for one or two years", the Intellectual Property Court held that the plaintiff's request for the court to define a PHOSITA was unsupported.

For further information on this topic please contact Hsiu-Ru Chien and Julie Wu at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email (hrchien@leeandli.com or julielywu@leeandli.com). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.

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