When determining whether or not a patent has an inventive step, it is necessary to consider all of the content disclosed in the prior art, a requirement which is stipulated in Article 3, Section 3.4.2 in the current patent examination guidelines in Taiwan, including any prior art that teaches away from the invention which is under application for a patent. If prior art does teach away from the invention, then it would be determined that it possesses an inventive step.
The Supreme Administrative Court's 108-Pan-Zi-55 Judgment made on February 14, 2019, acknowledged that teaching away was considered when determining the inventive step. In that particular case, the patent in dispute was challenged by the appellee. After the Taiwan Intellectual Property Office rejected the appellee's invalidation action, the appellee filed an administrative lawsuit before the Intellectual Property Court (“IP Court”). The IP Court reviewed this case and decided that the patent in dispute lacked an inventive step and therefore would be invalidated. The appellant (i.e., the patentee) then filed an appeal against the IP Court's judgement to the Supreme Administrative Court and asserted that a portion of the prior art taught away from the combination of the prior arts, and therefore the prior arts did not disclose the patent in dispute.
The Supreme Administrative Court holds that the concept of “‘Teach away’ means that the evidence expressly states or substantively implies such instruction or suggestion on the exclusion of inventions. This includes the situation where disclosed technical features in the evidence presented cannot be combined with each other, or where, based on the disclosed technical content in the evidence presented, a person having ordinary skill in the art would be dissuaded from competing with the invention.” While the prior art argued by the appellant adopts the different means from those of the patent in dispute, such prior art did not expressly state or substantively imply that it was not combinable with the other prior arts. Therefore, "teaching away" was not applicable to this case, and the decision of the IP Court was upheld.
The holding of the Supreme Administrative Court on teaching away conforms to the content of the current patent examination standards, which require that there must be opposite instructions which are expressly stated or substantively implied in the evidence presented as a necessary condition for teaching away. If the patentee would like to argue that the prior art teaches away from the invention, the patentee must specifically identify the expressive statement in the prior art, or explain how the prior art substantively implies the opposite instruction. If the prior art merely uses a different technical means from those of the patent, the court may decide that it does not constitute teaching away.