IP court provides much-needed clarity on distinction between novelty and fictitious novelty

Taiwan’s IP Court has clarified the distinction between the novelty requirement under Article 22(1) and the "lack of novelty based on legal fiction" criteria under Article 23 of the Patent Act. The ruling asserts that even if a technology is not identical to a previously filed but not publicly disclosed application, it could still lack novelty based on legal fiction and be ineligible for patent protection if a person with ordinary skill in the art could directly replace such differences with common knowledge.

Novelty and fictitious novelty in Taiwan’s Patent Act

Article 22(1) of the Patent Act establishes the novelty requirement, which states that a technology already published, publicly used or known to the public before the relevant patent application is filed cannot be granted a patent.

Separately, Article 23 addresses the notion of lack of novelty based on legal fiction, also known as ‘fictitious novelty’. According to this article, an invention patent cannot be granted if its content is identical to that of undisclosed prior art, except when the applicants are the same.

Thus, the question arises: when comparing whether a patent application is identical to undisclosed prior art to determine whether there is a lack of fictitious novelty, should the same novelty criteria apply? In other words, are there any other distinctions in the substantive content between novelty and fictitious novelty, apart from the difference in comparison targets being prior art and undisclosed prior art?

Taiwan IP Office (TIPO)’s guidelines on fictitious novelty

TIPO’s Patent Examination Guidelines set out different criteria for novelty and fictitious novelty. A patent application is only considered to lack novelty if it is entirely identical to a prior art or if the differences are merely in the form of textual expression or hierarchical concepts.

However, a broader interpretation is adopted for fictitious novelty. Even if the application’s content is not the same as the undisclosed prior art, it may still be deemed as lacking fictitious novelty if a person with ordinary skill in the art can replace the differences with common knowledge.

The court's judgment

In this case, the court supported the guidelines and asserted that the criteria for novelty and fictitious novelty are not the same. The reasoning for the court’s judgment can be summarised in three points.

The articles serve different purposes

First, Article 23 of the Patent Act (fictitious novelty) serves different purposes than Article 22(1) (novelty). The former aims to:

• prevent inventions that lack novelty from obtaining patent rights;
• complement the “request for substantial examination” system;
• reduce the need for defensive patent applications; and
• prevent inventions that have already entered the public domain from being patented by third parties.

While the first purpose of Article 23 aligns with Article 22(1), the other regulatory objectives differ. Therefore, applying the same interpretation of novelty to fictitious novelty is unreasonable.

Article 23 outlines an exemption

Second, Article 23 provides an exemption for cases where the patent applicant is the same as the applicant of the undisclosed prior art. Such an exemption is not offered in the novelty provision. This further supports the notion that the interpretation and application of Article 23 should differ from the norms of novelty.

Multiple novelty models

Finally, in comparative law, there are various regulatory models concerning the effect of undisclosed prior art, including strict novelty, expanded novelty and novelty and inventive step.

Under the "expanded novelty" model, even if an invention claimed in a later application is not fully disclosed in the description of an earlier application, the later one may still fail to obtain a patent. Several countries (eg, Japan and South Korea) have adopted this regulatory model. These jurisdictions’ approaches are worth noting as the framework, content and effect of their provisions outlining fictitious novelty are similar to the Article 23 of Taiwan’s Patent Act.

Key takeaways

Fictitious novelty disputes are relatively rare in patent litigation in Taiwan. In this case, the IP Court considered both parties’ expert opinions on legal issues rather than technical issues. As Taiwan has a statutory legal system, the court made its judgment based on what is written in the law. However, it also considered patent laws in different jurisdictions as references. The case demonstrated the court’s ability to understand legal issues from both a local and international perspective.

The court’s judgment confirms that, in Taiwan, the substantive criteria for fictitious novelty generally follow the expanded novelty model. Under this approach, the standard for fictitious novelty is broader than that of novelty, but is still distinct from inventive step. Plaintiffs and defendants in patent disputes should carefully analyse their cases to win a favourable decision on different legal grounds.