萬國法律事務所

The Supreme Administrative Court Said PHOSITA shall be defined clearly.

Wade Lin
Patent Attorney
Patent Deputy Manager
M.S. in Molecular and Cellular Biology
wade.lin@taiwanlaw.com

The Supreme Administrative Court ruled, in April 30, 2015, that the IP Court was wrong in not clearly defining the PHOS ITA in ATEN INTERNATIONAL Co., Ltd. vs. Taiwan Intellectual Property Office (hereinafter, TIPO). ATEN sued Heoya Technology, Inc. for infringing its Taiwanese Utility Patent No. 227224. Heoya responded to challenge the Utility Patent’s invalidity in front of TIPO. TIPO found the Patent invalid on August 27, 2012. ATEN appealed but both of the Appeal Office and the IP Court affirmed the TIPO’s decision. ATEN then appealed to the Supreme Administrative Court.

The Supreme Administrative Court remanded the IP Court’s decision mainly based on the consideration that “while determining the nonobviousness of the Patent at issue, the Court better clearly defines who the PHOSITA is under the Patent Act in this case.” This is the first case in Taiwan that the Supreme Administrative Court remands the lower Court’s decision due to not clearly defining the PHOSITA and raises serious discussion if there shall be a formal procedure, like the Markman hearing for claim construction, in a litigation for the two parities to conclude the PHOSITA for the Patent in suit. In the wake of that request, how to define the PHOSITA is another follow-up question. Shall the PHOSITA be defined by its education, working experience, age, etc.?

The TIPO raised this issue during a seminar in September, 2015. Both of the Judge Raymond T. Chen of CAFC in the United States and Judge Peter Meier-Beck of German Supreme Court said there is no such procedure in their general practice to specifically define who the PHOSITA is. Judge Chen said, according to his knowledge, there are rare cases in the United States discussing this issue but if it does happen, the Court may try to describe the PHOSITA from its education and experience in the area to which the Patent pertains. Sometimes, the inventors of the Patent at issue would be a good example for who the PHOSITA shall be.

For this issue, I personally talked with ATEN’s Attorney, Mr. Lu. Mr. Lu explained he was not willing to be trapped in whether or not the PHOSITA shall be clearly defined by its education or working experience. For him, the main purpose is to point out a long-existing question in determining non-obviousness in the TIPO or IP Court in Taiwan. That is, in some cases, the nonobviousness is alleged without a distinct, throughout, and objective consideration but mechanically combining the presenting prior arts. This kind of mechanical combination is usually full of hindsight and is not fair to the patentee. Therefore, he requested the Judge shall distinctly declare who the PHOSITA is, which will help the Judge to think from the point of view of the PHOSITA and help the two parities to focus on the contentions of non-obviousness.

It is a very good time point for participants of the game of patent in Taiwan to speculate a better methodology to determine non-obviousness in a more throughout, more objective, less hindsight way. It is not saying that the current system in Taiwanese practice is bad and has to be fixed. It is suggesting that the current system can be improved by filling some long-existing gaps or blemish so that a better environment for IP protection can be built.