In Taiwan, a utility model patent may be granted for any invention that is made with respect to the shape, structure or construction of an article from a technical concept based on the law of nature and is susceptible of industrial application, unless the invention lacks “novelty” or “non-obviousness.”
Although a utility model application in Taiwan is not subject to substantive examination as to “novelty” and “non-obviousness” and will mature into a registration soon after the formalities are fulfilled, a utility model patent cannot afford presumption of validity. The patentee will need to request the TIPO to conduct substantive examination as to “novelty” and “non-obviousness” before he can enforce his right against an alleged infringer. In addition, the TIPO will examine the validity of a utility model patent when an invalidation action is filed.
In determining whether an invention is in possession of “non-obviousness” over the prior art, the TIPO will search to locate all relevant prior art references and one prior art reference is chosen 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 “non-obviousness”.
In the test of the obviousness of the combination of the prior art references, the TIPO generally would evaluate whether the primary reference and the other references are in analogous fields of art and whether 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 examination be continued to determine whether a prima facie case of obviousness is established. In this context, the TIPO will examine 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 a recent invalidation action filed against several claims of a utility model patent entitled “An Improved Storage Container Frame”, after the Board of Appeals disagreed the TIPO’s Decision dismissing the invalidation action and remanded it to the TIPO for reconsideration, the patentee filed an administrative litigation with the IP Court, claiming that as the references cited by the invalidation petitioner cannot be combined in an obvious manner, they are incompetent to defeat the “non-obviousness” of the claimed invention. However, the IP Court dismissed the administrative litigation as groundless for the following reasons:
Among the references cited by the invalidation petitioner, reference 2 is a “combination container”, reference 3 is a “storage container frame”, an integral part of a container, and reference 4 is a “plug used for forming mold-injection plastic articles.” The containers disclosed in references 2 and 3 commonly use several posts to engage the upper and lower frame or lid in a snug-fit manner. Apparently, they are in analogous fields of art, have common problems to be solved and serve the same or similar intended purpose. There is indeed a motivation for a person skilled in the art to combine them.
Not being satisfied with the Court Ruling, the patentee further appealed to the Supreme Administrative Court, claiming, among others, that as references 2, 3 and 4 fall in different international classes, they could not possibly belong to analogous technical fields let alone serve the same function or solve the same problem. As such, there is no teaching or suggestion in any of the cited references that would motivate a person with ordinary skill in the art to combine them.
The Supreme Administrative Court ultimately dismissed the appeal as groundless, holding that:
In the determination of whether a skilled artisan can be motivated to combine two or more references, quite a number of parameters should be considered. Although the references cited by the invalidation petitioner fall in different international classes, the classification of the references is only the most basic and lowest-level consideration and substantial evidence is further needed to support a finding of motivation to combine the prior art references. References 2 and 3 and the claimed invention are all related to the use of posts/frames to engage the upper and lower frames or lid in a snug-fit manner. They are apparently in analogous fields of art, serve the same intended purpose, and use similar technical means. Apparently, references 2, 3 and 4 can be combined in an obvious manner.
This case emphasizes the need for a careful investigation in the test of the “obviousness of the combination of the prior art references” and information regarding the classification of the references is only the lowest-level parameter to be considered.