当所は二月にパテント部弁理士林宗緯が書いたIP Blog第一期：
Trends in Determination of the Inventive Step in TW Practiceを発行しました
IP Court Watch / Patents
Trends in Determination of the Inventive Step in TW Practice
Frank Lu, Partner Attorney-at-Law & Patent Agent
MS. in Biochemistry
frank.lu@taiwanlaw.com
High Success Rate in Patent Invalidations:
According to the statistics from July 2008, when the IP Court began adjudicating cases, to June 2013, in 328 of the 752 patent infringement cases filed, the defendants raised invalidity issues and the IP Court held that the patents at issue were invalid in 197 of those cases. The success rate of the invalidity defense is surprisingly high at 60%, and the majority of these defendants attacked the validity of the patents at issue by alleging a lack of inventive step.
The Standard for the Inventive Step:
The rules for determining the existence of the inventive step in Taiwan are similar to those set forth for determining non-obviousness in the U.S. In Delta Electronics v. TIPO, an administrative patent case in Taiwan decided in 2012, the IP Court held that “the standard that the combination of prior art can prove the lack of the inventive step is not merely a mechanical comparison of the claim with the prior art, as most inventions are composed of prior art, but express new features. Further, it is known that the inventive step should be determined at the time when the invention was filed, but no matter when the patent examiner or the judge decides on the issue, there must be a gap from the examining time to the filing date, and during the gap, the techniques move progressively. Therefore, the invention cannot be considered to be obvious merely because it is disclosed by a combination of prior art, and hindsight should be avoided.”
The standard set forth above along with the guidelines for patent examination is clear. So, why is the invalidation rate is so high? From our perspective, the reasons might be that, when the Judges of the IP Court apply the standard to real cases, they might not identify carefully the persons skilled in the art and also fail to determine whether the inventive step exists right at the time the invention was filed.
Trends:
After substantial criticism from practitioners and scholars recently, the IP Court has held internal discussions on this matter. The Division Chief Judge made a public speech in March 2014, and he expressed that the Court cannot simply decide that “the invention can be easily made by a person ordinarily skilled in the art based on prior art” without giving specific reasons in support of that decision. The Judge further emphasized the importance of the teaching, motivation, and suggestion when combining prior art.
Although there are no formal statistics, according to our recent observations, the invalidation rate seems to be falling. This trend is positive for patent owners who seek to enforce their patents in Taiwan. 
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