Newsletter
The Supreme Court Reiterates the Need to Establish the Knowledge Level of PHOSITA and Adopts the "Could-Would Principle" in Determining Inventive Step
The 2024 Tai Shang Zi No. 459 judgment rendered by the Supreme Court on 20 November 2024 explicitly indicated that the "could-would principle" should be adopted in determining an inventive step. Regarding the issue of whether the knowledge level of a person having ordinary skill in the art ("PHOSITA") must first be established in determining an inventive step, there remains considerable controversy in Taiwan's practice. For instance, some judgments (e.g., the 2022 Tai Shang Zi No. 186 Judgment rendered by the Supreme Court on 20 July 2022) have clearly stated that the knowledge level of PHOSITA must first be determined; otherwise, the judgment would constitute a violation of laws. However, some judgments (e.g., the 2024 Zai Zi No. 11 Judgment rendered by the Supreme Administrative Court on 12 September 2024) have held the position that PHOSITA is a fictional character, not a concrete individual; therefore, the knowledge level of PHOSITA must be substantiated through external evidence. These judgments take the view that the knowledge level of PHOSITA is already, to some extent, concretized during the court's reasoning in determining an inventive step. Therefore, as long as such reasoning does not violate rules of experience, logic, or evidence, it is difficult to claim that the court failed to consider the knowledge level ofPHOSITA.
On 7 May 2025, the Supreme Court rendered the 2024 Tai Shang Zi No. 453 Civil Judgment ("the Judgment"), which reiterates that, in determining an inventive step, the "knowledge level of PHOSITA" must be first established, and the "could-would principle" must be adopted. A summary of the reasoning thereof is provided below.
1. The "could-would principle" should be adopted:
In the Judgment, the Supreme Court stated that "Determining whether PHOSITA can readily achieve the invention based on the prior art requires distinguishing between an 'obvious willingness to try' and an 'obvious willingness to carry out' (could-would principle). In other words, the key to determining an inventive step lies not only in whether the invention is theoretically feasible, but also in whether there existed specific inducements, concrete factual bases, or incentives that would motivate PHOSITA to conduct research and succeed. It is difficult to externally observe why PHOSITA would extract certain technical features from various citations and combine them to achieve the technical features of a new model patent. Therefore, to infer the intent of PHOSITA from external evidence, factors related to the citations and the new model patent—such as the relevance of the technical field, commonality in the problems to be solved, similarity in function or effect, teachings or suggestions, and the like—should be considered. The more such factors exist, the stronger the motivation to combine, and the more likely it is that an inventive step will be negated."
2. The knowledge level of PHOSITA at the time of filing the disputed patent should first be established:
In the Judgment, the Supreme Court stated that, "In determining the inventive step of the disputed patent, in order to assess whether PHOSITA identify the differences between the disputed patent and the prior arts based on the common general knowledge at the time of filing and can readily achieve the disputed patent, the knowledge level of PHOSITA at the time of filing the disputed patent must first be established."
In addition, in the Judgment, the Supreme Court pointed out that the original judgment failed to examine the expert opinion submitted by the patentee to confirm the content of the prior arts, and also failed to establish the knowledge level of PHOSITA at the time of filing the disputed patent when assessing an inventive step. This constituted a violation of laws, and the original judgment was therefore revoked and remanded to the Intellectual Property and Commercial Court.
The Supreme Court has recently reiterated the "could-would principle" multiple times and emphasized the necessity of first establishing the knowledge level ofPHOSITA. How the courts of first and second instance will interpret and apply these requirements in the future warrants continued observation.