In Judgment 2024-Tai Shang-459, issued on November 20, 2024, the Supreme Court articulated the following important principles regarding determination of the patent inventive step.

 

1. Adoption of the "could-would principle"

 

The Supreme Court pointed out in the aforementioned judgment that assessment of the "inventive step" requirement cannot simply involve mechanically disassembling the individual components or steps of a claimed invention of a disputed patent and then combining or comparing them with the cited prior art references. It is necessary to evaluate whether one of ordinary skill could easily complete the invention based on prior art and whether an obvious willingness exists to attempt or implement the same (the "could-would principle"). In other words, determination of the inventive step focuses not only on the likelihood of successful theoretical implementation thereof, but also the presence of incentives, concrete factual bases, or encouragements in the specific case motivating one of ordinary skill to engage in research and development and subsequently achieve success.

 

In this case, the plaintiff (patent owner) argued against the three prior art references presented by the defendant, asserting that the second-instance court could not mechanically extract the characteristics of different types of machines from Evidence 1 and then combine them with Evidence 2 and 3 to negate the inventive step of the disputed patent. The plaintiff contended that Evidence 2 requires three ICs to operate, and thus, two of the ICs cannot be ignored when combining Evidence 2 with Evidence 1 or Evidence 3. Furthermore, Evidence 3 requires the use of "combinatorial language" for coding, but the specification and diagrams of the disputed patent lack any "combinatorial language" as part of the operational basis thereof and explicitly exclude combinatorial language instructions. Therefore, the Supreme Court deemed that the second-instance court should have further investigated these arguments.

 

2. Consideration of "secondary factors"

 

The Supreme Court stated that a "person skilled in the art" constitutes a hypothetical individual, and moreover, infringement litigation often occurs a long time after patent filing, leading to practical difficulties in judgment and potential subjective biases. Thus, appropriate judgment should be facilitated based on objective facts. The concept of "secondary factors" in assessing the inventive step is developed from the relationship between the invention and the market, so as to determine the degree of technical contribution, including whether the invention yields unexpected effect, solves long-standing problems, overcomes technical prejudices, or achieves commercial success. If parties present secondary factor-related evidence demonstrative and objectively reasonable regarding assessment of the inventive step, the same should be investigated and considered to replicate the environment and conditions at the time of original patent filing.

 

In this case, the plaintiff submitted evidence claiming that over 20 years ago, countries such as the UK, the US, China, and Japan granted the disputed patent, that numerous relevant companies in Taiwan participated in licensing after considering the content of the disputed patent, and that billions of ICs utilizing the technology of the disputed patent have been exported worldwide, which could be seen as solving long-standing problems and achieving commercial success. The Supreme Court held that if the plaintiff's presented arguments are factual, then such evidence may represent objective facts that influence the determination of the inventive step of the disputed patent. Therefore, the second-instance court may consider inquiring of the involved companies regarding the licensing process and the actual use of the disputed patent, rather than simply dismissing the plaintiff's arguments based on the second factors.

 

In addition to articulating the two important principles mentioned here, the Supreme Court reiterated that the assessment of patent inventive step should consider the differences between the "primary prior art" and the disputed patent, echoing the intent of the Supreme Administrative Court's Judgment 2020-Pan-355. The Supreme Court stated that the so-called "closest prior art" (primary prior art) may serve a best foundational "single reference document" for research and development, and this reference is the most likely to facilitate completion of the invention.  The comparison between such primary prior art with the technical content of the disputed patent can avoid a mechanical assembly or combination of prior art that leads to hindsight errors. The Supreme Court criticized the second-instance judgment for failure thereof to identify primary prior art and also to employ the examination principles regarding inventive steps, constituting a violation of applicable laws and regulations, and being inadequately reasoned.