1 Examination Standard of Inventive Step in Taiwan Tony C. H. Lin Patent Attorney APAA Taiwan Group Lee and Li, Attorneys-at-Law November 18, 2007 in Adelaide

2 Inventive Step Requirement If the invention can be easily conceived by a person having ordinarily skill in the art based on prior art before the application for patent is filed, no invention patent should be granted If the invention can be easily conceived by a person having ordinarily skill in the art based on prior art before the application for patent is filed, no invention patent should be granted

3 PERSON HAVING ORDINARY SKILL IN THE ART A virtual person who has general knowledge in the related technical field and ordinary ability to perform routine work and routine experiment A virtual person who has general knowledge in the related technical field and ordinary ability to perform routine work and routine experiment General knowledge means well-known or widely used information, information disclosed in textbooks or reference books, or understandings based on rule of thumb General knowledge means well-known or widely used information, information disclosed in textbooks or reference books, or understandings based on rule of thumb

4 PRIOR ART Prior art includes art that has been published, publicly use, or known to the public. Prior art includes art that has been published, publicly use, or known to the public. Prior art also includes well-know or widely used information such as those disclosed in dictionary, textbooks, reference books, etc. Prior art also includes well-know or widely used information such as those disclosed in dictionary, textbooks, reference books, etc. Not only prior art of related technical field, but also prior art of irrelevant technical field but having common technical feature should be considered Not only prior art of related technical field, but also prior art of irrelevant technical field but having common technical feature should be considered

5 EASILY CONCEIVED A claimed invention can be easily conceived if a person having ordinary skill in the art can, after reading one or more citations with reference to common sense at the time of filing, conceive the claimed invention by way of application to another technical field, substitution, modification or combination. A claimed invention can be easily conceived if a person having ordinary skill in the art can, after reading one or more citations with reference to common sense at the time of filing, conceive the claimed invention by way of application to another technical field, substitution, modification or combination.

6 DISCOLSURE OF CITATIONS The disclose of a citation includes not only clearly written contents but also unwritten but substantially implied contents. The disclose of a citation includes not only clearly written contents but also unwritten but substantially implied contents.

7 STEPS TO DETERMINE INVENTIVE STEP Step1: ascertain the scope of the claimed invention Step1: ascertain the scope of the claimed invention Step2: ascertain the disclosure of relevant prior art Step2: ascertain the disclosure of relevant prior art Step 3: ascertain the level of technical knowledge of persons having ordinary skill in the art Step 3: ascertain the level of technical knowledge of persons having ordinary skill in the art Step 4: ascertain the difference between the claimed invention and the prior art Step 4: ascertain the difference between the claimed invention and the prior art Step 5: ascertain whether persons having ordinary skill in the art can easily conceived the entirety of the claimed invention Step 5: ascertain whether persons having ordinary skill in the art can easily conceived the entirety of the claimed invention

8 MOTIVATION TO COMBINE TECHNICAL FEATURES Reasonable motivation is required to combine more than one technical features. Reasonable motivation is required to combine more than one technical features. However, motivation to combine more than one technical features may be based on common sense, without pointing out where the motivation to combine is disclosed. However, motivation to combine more than one technical features may be based on common sense, without pointing out where the motivation to combine is disclosed. Basic similarly to KSR v. Teleflex judgment in the US. Basic similarly to KSR v. Teleflex judgment in the US.

9 SECONDARY CONSIDERATIONS Having unexpected effect Having unexpected effect Solving long-existing problem Solving long-existing problem Overcoming technical prejudice Overcoming technical prejudice Gaining commercial success Gaining commercial success

10 WAY OF CREATION Irrelevant to evaluation of inventive step. Irrelevant to evaluation of inventive step. It doesn’t matter whether an invention is created by accident or developed as a result of extensive research. It doesn’t matter whether an invention is created by accident or developed as a result of extensive research.

11 PIONEER INVENTION Generally considered as having inventive step if no close prior art citation was found. Generally considered as having inventive step if no close prior art citation was found.

12 INVENTION OF APPLICATION TO ANOTHER TECHNICAL FIELD Considered as having inventive step if it can realized unexpected effect or overcome the long-exiting problem in the technical field. Considered as having inventive step if it can realized unexpected effect or overcome the long-exiting problem in the technical field. Example: Example: –Prior art: a compound for reducing surface tension of water –Claimed invention: a detergent containing said compound –Inventive step: NO

13 INVENTION OF USE Considered as having inventive step if it can generate unexpected effect Considered as having inventive step if it can generate unexpected effect Example: Example: –Prior art: A lubricant having cooling effect. –Claimed invention: A grinding slurry containing said lubricant. –Invention step: NO

14 INVENTION OF SUBSTITUTION Considered as having inventive step if it generates unexpected effect. Considered as having inventive step if it generates unexpected effect. Example: Example: –Prior art: Water pump comprising an electrical motor. –Claimed invention: Water pump comprising a hydraulic motor. –Inventive step: NO

15 INVENTION OF OMISSION Considered as having inventive step if the function of the invention is not lost by the omission. Considered as having inventive step if the function of the invention is not lost by the omission.

16 INVENTION OF COMBINATION Considered as having inventive step if it generates new effect or improved effect. Considered as having inventive step if it generates new effect or improved effect. Example: Example: –Prior art: An digital watch and a pen –Claimed invention: A pen with digital watch. –Inventive step: NO

17 INVENTION OF SELECTION Considered as having inventive step if the selection is not directly predictable from the prior art and the selected scope shows more significant effect or unexpected new effect. Considered as having inventive step if the selection is not directly predictable from the prior art and the selected scope shows more significant effect or unexpected new effect. Example: Example: –Prior art: Amount of ingredient X in a composition is related to the stability of the composition. –Claimed invention: Composition having a specific scope of amount of X. –Inventive step: NO (being directly predictable)

18 Thank you for your attention! Tony C. H. Lin