The principle of “Examination as a Whole” is stipulated in the Taiwan Patent Examination Guidelines, which states: “When determining an inventive step, what is considered is the claimed invention as a whole, rather than an individual technical feature or a portion of the technical features of the invention. Furthermore, the determination of whether the invention is easily accomplishable should not be based merely on the differences between the invention and the relevant prior art (Section 3.3.1, Chapter 3, Part II of the TW Patent Examination Guidelines).”
However, the question remains: how should the claimed invention (or utility model) be properly considered “as a whole?” In invalidation cases, both parties often claim to have carefully adhered to the principle that the claimed invention should be considered “as a whole,” yet arrive at opposite conclusions. A recent Court decision, 113 Xing-Zhuan-Su 60 (2024 Administrative Patent Litigation No.60), Intellectual Property and Commercial Court, has provided clarification on this issue.
The Court decision concerns an invalidation case filed against TW utility model patent No. M640200. The Petitioner challenged the inventive step of the patent at issue. The TIPO held the challenged claims unpatentable. The Patent Owner then filed an administrative litigation after going through the administrative appeal procedure.
Claim 1 of patent at issue recites, in part, “a plurality of cross plates (20), two ends of the plurality of cross plates (20) being each covered by a gasket (30), each gasket (30) being embedded in a respective groove (11), such that the cross plates (20) are spaced apart from each other and span across the two side strips (10).” The main issue lies in: whether these features lack an inventive step in view of Exhibit 2 in combination with Exhibit 3.
The drawings below show a comparison between the patent at issue and the Exhibits. The TIPO has equated the “longitudinal beams” and “square tubes” of E2 with the “side strips” and “cross plates” of the patent at issue, respectively. Regarding the claimed “gasket,” the TIPO expressed the following opinions: Square tubes 11 of E2 are mounted to recesses of longitudinal beams 12, and the surfaces of square tubes 11 are provided with rubber non-slip strips 111. Such an arrangement is equivalent to the arrangement of a gasket being embedded in the groove of the side strip. When a rubber element is placed on the surface of one object and embedded in the groove of another object, the properties of the rubber material naturally provide an interference fit between these two objects. Moreover, the rubber non-slip pad 22 of E3 is provided at one end of a supporting leg. Such an arrangement is equivalent to the arrangement of a gasket being provided at the end of the cross plate. The TIPO then concluded that “examined as a whole,” what is claimed in claim 1 lacks an inventive step in view of E2 and E3.
 |
The Court found that rubber non-slip strips 111 of E2 are provided on the surfaces of square tubes 11 for the workers to step thereon, and rubber non-slip pad 22 of E3 is provided at the supporting leg for enhancing the friction between the maintenance walkway supporting legs and the solar module rails. As such, these rubber elements singled out from the Exhibits are different from the claimed gaskets in terms of purpose, function and effect. In fact, the claimed gaskets are provided at two ends of the cross plates and embedded in the grooves of the side strips, such that the cross plates and the side strips form an interference fit and have structural stability. Therefore, the Court concluded that E2 and E3 both fail to disclose the technical feature of “a plurality of cross plates (20), two ends of the plurality of cross plates (20) being each covered by a gasket, each gasket (30) being embedded in a respective groove (11), such that the cross plates (20) are spaced apart from each other and span across the two side strips (10).” As a result, the TIPO’s original decision was revoked.
Takeaways
The TIPO focused on inferring the function of the rubber material from its properties, and concluded that “examined as a whole,” the technical feature recited in claim 1 lacks an inventive step in view of E2 and E3. In contrast, the Court carefully examined the structure, purpose, function and effect of the rubber elements disclosed in the Exhibits, and concluded that the Exhibits fail to disclose the claimed subject matter “as a whole.”
This Court decision stresses that when assessing the inventive step based on the principle that the claimed invention should be considered “as a whole,” one should compare similarities and differences with the invalidation evidence in terms of structure, purpose, function and effect, then make a comprehensive judgement on the technical features as a whole.
At the same time, the Court decision offers useful takeaways for parties in invalidation actions. If one party conducts its comparison by isolating an element out of context and focusing on a single aspect on the issue of inventive step, the other party can argue, based upon the principle this Court decision affirmed, that the proper examination concerns the invention as a whole rather than an individual technical feature or a portion of the technical features of the invention, and that the assessment shall NOT be based solely on the differences between the invention and the relevant prior art.