Amended examination guidelines and invitation for amicus curiae briefs

An amendment to the Guidelines for Patent Examination regarding the determination of inventive step became effective on July 1 2017. The main purpose of the amendment is to ensure that examiners are mandated to provide comprehensive reasoning in office actions in order to improve the examination quality of inventive step.

The amendment includes the following main points:

• It clarifies the difference between “whether it is obvious to combine the citations or not” and “easily accomplished”. Further, a description of how to determine “whether the claimed invention can be easily accomplished or not” has been added. The determination of “easily accomplished” thus comprises “whether it is obvious to combine the citations or not” and “whether the reasoning of lacking inventive step can be established or not”.
• In addition to a single person having the normal skills and knowledge in a particular technical field, a person having ordinary skill in the art now may be defined as a group of people when the invention involves multidisciplinary research or requires a team of researchers with various knowledge or specialties in the R&D process.
• Auxiliary factors for determining inventive step have been described in detail with reference to the case law or examination guidelines of various countries. For example, the definition of ’unexpected effects’ has been revised and new cases are added with reference to Chinese examination guidelines; and factors for determining ’long-felt needs’ are newly added according to the US Patent and Trademark Office’s Manual of Patent Examining Procedure.

The amendment is the most extensive overhaul of the guidelines in recent years in terms of determining inventive step. The Taiwan Intellectual Property Office aims to reduce the hindsight bias of examiners. For example, in determining whether it is obvious to combine citations, the amendment stipulates that examiners should consider the motivations to combine prior art, instead of the relevance or commonality between the claimed invention and the prior art, as shown below.

On the other hand, the issue of how to define the knowledge or skill level of a person having ordinary skill in the art has been ongoing in Taiwan. In view of recent technological advancements, interdisciplinary R&D is inevitable. Therefore, in the amendment, a 'person having ordinary skill in the art' may be optionally defined as a group of people, which is expected to elevate the threshold for the inventive step.

In addition to this new definition, the Taiwan Intellectual Property Court (TIPC) recently announced an invitation for amicus curiae briefs in light of when or how to define a person having ordinary skill in the art.

The invitation echoes the amendment, and the amicus curiae briefs may further affect judicial and patent examination practice in Taiwan. Interested parties may share their legal perspectives with the TIPC by October 26 2017.