New Guidelines on Examination of "Inventive Step" in Taiwan

To further improve the examination quality, the TIPO has recently amended the examination guidelines regarding “inventive step”, among others. The new Guidelines were implemented on July 1, 2017.

According to the new guidelines, in determining whether an invention is in possession of “inventive step” over the prior art, the Examiner should first conduct a search to locate all relevant prior art references and then choose one prior art reference from all the references as the primary reference. In the event that there is no teaching, suggestion or motivation to render the combination of the primary reference with the other references to be obvious, the invention shall not be rejected for being devoid of inventive step.

When considering the obviousness of the combination, the Examiner should evaluate if the primary reference and the other references are in analogous fields of art and if they have common problems to be solved as well as serve the same or similar intended purpose. Only if it is found that the located references can be combined in an obvious manner, shall the Examiner continue with the examination of the invention to determine whether or not to establish a prima facie case of obviousness. In this context, the Examiner must examine, among other parameters, the references against the claimed invention to decide if the primary reference alone, or in combination with the other references may teach away from the claimed invention and whether the claimed invention can indeed achieve unexpected meritorious advantageous over the prior art.

In addition, when a claimed invention is rejected for the reason that it would have been “well within the ordinary skill of the art at the time of filing,” the Examiner must provide evidence or detailed explanations at the least.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.