Taiwan Patent Examination Guidelines for Non-obviousness of Patentability Amended
In Taiwan, patent applicants often receive an official action made by the examiner against an invention patent for lacking the non-obviousness of patentability. Even though relative regulations and brief enumerations are provided in Taiwan Patent Examination Guidelines, the standards of the examination and the procedure of the determination for Non-obviousness are still challenged and criticized by people.
In view of establishing a definite and explicit procedure for determining whether an invention patent possessing non-obviousness of patentability, TIPO makes an amendment by adding “Factors of negation of non-obviousness” and “Factors of confirmation of non-obviousness” to the determination steps of the non-obviousness required in Patent Examination Guidelines.
“The motivation to combine a plurality of prior arts”, “Simple modification” and ”Simple aggregation” are the three conditions included in“Factors of the negation of non-obviousness”, described as following.
“The motivation to combine a plurality of prior arts” means that the connection and commonality between the prior arts enable a PHOSITA to combine the technical features of the prior arts in order to accomplish the invention. The examination upon the non-obviousness of the invention shall be conducted without considering the connection and commonality between the technical features of the invention and prior arts, so as to prevent the patentability from being determined based on hindsight by the examiner.
Referring to “Simple modification”, it means that a PHOSITA solves the existing problems by changing, altering, omitting the different technical features between the prior art and invention patent based on common sense.
With regard to ”Simple aggregation”, it means that an invention is accomplished by simply combining the technical features of prior arts that are not functionally corresponding to or interacting with each other.
The three conditions aforementioned are factors of consideration upon determining the obviousness of an invention patent.
“Teach away”, “Advantageous function” and “Secondary consideration” are the three conditions included in“Factors of the confirmation of non-obviousness”.
Referring to “Teach away”, it means that the teaching or suggestion of prior arts substantially prevents a PHOSITA from implementing the technology or skills identical or similar to the technical features of the present invention.
With regard to” Advantageous function”, it means that the function and the effect are directly produced by the technical features of the present invention.
The “Secondary consideration” mentioned above includes evidence of commercial success, long-felt but unfulfilled needs, failure of others, and unexpected results.
By this opportunity, TIPO would like to resolve the doubts about the standard of the examination and the procedure of the determination for Non-obviousness.