InternationalUSRemember you can easily switch between MIP US and MIP International at any time

Taiwan: New guidelines on examination of inventive step




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.

Treloar-Peter-100
Chiu-ling Lin

Saint Island International Patent & Law Offices
7th Floor, No. 248, Section 3
Nanking East Road
Taipei 105-45, Taiwan, ROC
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377


Comments






profile

Managing IP

ManagingIP

ManagingIP profile

Our weekly IP news round-up includes NPEs in Europe, AI, sovereign immunity, Section 101, UK trade secrets, and the… https://t.co/1IKhZLv7Gl

Feb 22 2018 03:46 ·  reply ·  retweet ·  favourite
ManagingIP profile

German Constitutional Court plans to decide UPC case in 2018 https://t.co/HURPYcerwS But it is not certain a decisi… https://t.co/pQugzgEtRt

Feb 22 2018 02:04 ·  reply ·  retweet ·  favourite
ManagingIP profile

RT @UPCtracker: This is one of nine (9) cases allocated to Justice Prof Huber (among them consolidated complaint re: adequate legal protect…

Feb 21 2018 05:15 ·  reply ·  retweet ·  favourite
More from the Managing IP blog


null null null

null null null

February 2018

FRAND aid: Is the European Commission’s SEP guidance useful?

Both patent owners and implementers have welcomed the European Commission’s communication on standard essential patents. Does that mean it has successfully balanced competing interests or merely dodged the difficult questions? James Nurton investigates



Most read articles

Supplements