To further improve examination quality, the Taiwan IP Office
(TIPO) recently amended the examination guidelines regarding
inventive step, among other changes. The new guidelines were
implemented on July 1 2017.
According to the new guidelines, in determining whether an
invention possesses inventive step over the prior art, the
examiner should first conduct a search to locate all relevant
prior art references and then choose one prior art reference
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 inventive step.
When considering the obviousness of the combination, the
examiner should evaluate if the primary reference and the other
references are in analogous fields of art and if 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 the
examiner continue with the examination of the invention to
determine whether or not to establish a prima facie case of
obviousness. In this context, the examiner must examine, among
other parameters, 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 addition, when a claimed invention is rejected for the
reason that it would have been "well within the ordinary skill
of the art at the time of filing", the examiner must provide
evidence or detailed explanations at least.
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| Chiu-ling
Lin |
Saint Island International Patent & Law
Offices
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Nanking East Road
Taipei 105-45, Taiwan, ROC
Tel: +886 2 2775 1823
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