Using the combination of prior art references to challenge patent inventive step is commonly seen in both civil and administrative patent litigation. In our previous articles titled “Taiwan Supreme Court’s Recent Decision Regarding Inventive Step in Patent Infringement Civil Litigation” and “Recent Taiwan Supreme Administrative Court’s Decision Regarding Inventive Step”, we introduced Supreme Court cases 2022 Tai Shang Zi No. 186 and 2024 Tai Shang Zi No. 459, as well as Supreme Administrative Court cases 2021 Shang Zi No. 597 and 2024 Shang Zi No. 132. These decisions emphasize that the determination of inventive step should begin with an investigation into the level of ordinary skill in the art, followed by an identification of the primary prior art reference among the cited references, as well as secondary considerations, such as solving a long-felt but unresolved problem, and the commercial success facts such as obtaining license. In its judgment dated November 20, 2024, 2024 Tai Shang Zi No. 459, the Supreme Court specifically pointed out that determining whether a skilled person can easily accomplish the invention based on prior art requires distinguishing between an “apparent willingness to attempt” and an “apparent willingness to implement” under the “could–would” approach. In other words, the determination of inventive step should not be limited to whether the invention could theoretically be implemented successfully, but should also consider whether, in the specific case, there were incentives, concrete factual bases, or encouragement that would have motivated a skilled person to pursue the development and bring it to completion.
The Supreme Court’s aforesaid judgment (2024 Tai Shang Zi No. 459) can be regarded as the first case where Taiwan’s highest courts expressly applied the “could–would” approach in determining inventive step. Subsequently, on May 7, 2025, in judgment 2024 Tai Shang Zi No. 453, the Supreme Court reaffirmed this approach and further noted that, in order to facilitate the determination of a skilled person’s subjective mindset from external evidence (so as to distinguish between an “apparent willingness to attempt” and an “apparent willingness to implement”), factors such as the relevance of the cited prior art references to the patent’s technical field, the commonality of the problems to be solved, the similarity in function or effect, and any teachings or suggestions should be considered. The more present such factors are, the stronger the motivation to combine, thereby negating inventive step.
Following the above two civil judgments of the Supreme Court, the Intellectual Property and Commercial Court (hereinafter referred to as the “IPC Court”) also adopted the “could–would” approach in its recent administrative judgment 2024 Xing Zhuan Su Zi No. 49, rendered on August 25, 2025. The patent-in-suit was a spiral planer spindle that can be fitted with both double-edged and four-edged blades. The IPC Court first referred to several cited prior art references, as well as the disclosures of prior arts acknowledged in the patent-in-suit, to establish the level of ordinary skill in the art. The IPC Court then further reasoned that, after a skilled person had initially installed either four-edged blades or double-edged blades on the spiral planer spindle, the person would face the technical problem of how to install additional blades. At that point, based on certain prior art, it would be objectively reasonable to expect that the skilled person would attempt to adopt solutions taught by other prior art references. The basis of the IPC Court’s determination was the relevance of the prior art in the field, the commonality of the problems to be solved, the similarity in functions or effects, and the teachings or suggestions contained therein. Accordingly, the IPC Court held that, based on these cited references, a skilled person would have had a clear motivation to combine the prior art and an apparent willingness to implement such a combination to achieve the technical features of the patent-in-suit, rather than merely hindsight willingness to attempt such a combination.
Referring to the Supreme Court and IPC Court decisions concerning the “could–would” approach, the IPC Court, when determining the motivation to combine for inventive step, will consider factors such as the relevance of the technical field, the commonality of the problems to be solved, the similarity in functions or effects, and the teachings or suggestions of the prior art, while also distinguishing between an “apparent willingness to attempt” and an “apparent willingness to implement” concerning the “could–would” approach. Since the Taiwan Patent Examination Guidelines does not expressly adopt the “could–would” approach as a basis for determining inventive step, it is worthwhile to observe how the IPC Court and the highest courts will further develop this approach in future civil or administrative cases. Moreover, following the above judgments, it has already been observed in administrative litigation practices that the IPC Court has increasingly required invalidation requesters to provide more detailed explanations regarding the motivation to combine prior art references.