Revised guidelines improve Taiwan patent exam quality

The Taiwan Intellectual Property Office (TIPO) revised the inventive step examination guidelines in April 2017, which came into force on 1 July 2017. According to the TIPO, this revision is to enhance patent examination quality and prevent examiners from arbitrarily combining prior art references as if they were pieces of a mosaic, which usually results in findings based on hindsight.

The new guidelines provide a general definition for “PHOSITA” (Person Having Ordinary Skill In The Art) while adding that, if required, the PHOSITA may include a group of persons having ordinary skill in the art. The guidelines are silent about whether patent examiners should specifically interpret a PHOSITA in their decisions.

The Supreme Administrative Court gave a clear answer in its judgments 2015-Pan-No. 326 and 2016-Pan-No. 503 that, before judging inventive step, the skill standards of a PHOSITA should be first determined based on the technical field of the disputed patent, the problems encountered by its prior art, the methods proposed to resolve these problems, the complexity of disclosed technologies, and the ordinary levels of practice, so as to form an objective baseline for determination, and the parties involved should be provided with an opportunity to elucidate their opinions.

Chien Hsiu-Ru is a partner at Lee and Li Attorneys at Law in Taipei