A Recent Court Ruling with “Commercial Success Evidence” being Considered in the Obviousness Enquiry

In order to prevent the Examiner from exercising a pure hindsight to assert a case of obviousness merely based on the technical aspects of an invention, Taiwan’s IP Office has included “commercial success” in the examination benchmark as one of the secondary considerations that may support a non-obviousness finding. In a Ruling rendered by the Supreme Administrative Court in 2015, the Judge affirmed that, if a patentee has submitted evidence of commercial success to support the inventive step of the invention claimed over the prior art, the court ought to investigate and examine the relevant evidence.

However, statistically, very few patentees have successfully persuaded the Judges of the inventive step of their inventions based on the alleged commercial success. This is mostly due to the strict requirement that the patentee must establish a connection (or nexus) between the novel aspects of the patent claim(s) and the alleged commercial success in order to prove that the commercial success supports a non-obviousness.  In other words, the commercial success ought to be proven to be directly connected to the novel aspects of the invention, rather than other factors such as marketing or advertising strategies. The lack of proof of such connectivity generally would make it difficult for the court to rule out the possibility that other factors, including marketing or advertising strategies, market supply and demand or the overall socio-economic boom, may be attributable to the commercial success as well.

It is worth noting that Taiwan’s IP Court rendered on February 14, 2019 a Ruling in which the Judge approved the patentee’s contention that the invention claimed meets conditions for “non-obviousness” in view of the commercial success of the invention, thus saving the patent from invalidation. The invention is directed to a second-generation foldable thermo food cover, an improvement from the first-generation non-foldable thermo food cover.  The Judge recognized the commercial success of the patented product, pointing out that no one has copied the first generation non-foldable thermo food cover since its launch and it was not until the introduction of the second generation product into the market that counterfeiters thrived. Obviously, counterfeiters were to see the uniqueness and commercial value of the second generation product with foldable function. On this score, the Judge concluded that the commercial success of the second generation competitive product indeed resulted from its novel aspects, rather than any marketing or advertising strategies. The Judge’s finding also suggested that commercial success can be premised on a product marketed by someone else, even an infringer, as long as there is a nexus between the success of the product and the invention claimed.

As there may be a number of factors behind a successful product, it is practically not easy to prove that the commercial success of a product is directly attributed to the novel aspects of the product. Therefore, apart from commercial success, the patentee may attempt to submit reasoned explanation and evidence proving that the invention claimed was copied by competitors (as indicated in the above-mentioned Ruling), could meet long-felt but unsolved needs, or achieve unexpected results so that the court may also rely on these secondary considerations in the obviousness enquiry.

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.