Recent IP Court practice and revised Patent Examination Guidelines

The Taiwan Intellectual Property Office (TIPO) regularly reviews and collects important cases – both administrative and civil proceedings – and their associated prosecution issues with analytical value. In 2017 the TIPO published several revisions to specific chapters of the Patent Examination Guidelines.

This chapter summarises several notable recent cases alongside related issues raised by the recent revisions to the Patent Examination Guidelines, followed by practical tips for IP owners which may be helpful during patent prosecution and enforcement.

Determining whether an invention is easily achieved

The applicant in an administrative litigation action sued the TIPO for its rejection of a patent application claiming a faucet featuring a shut-off control device for the flow valve (see Figure 1). The TIPO rejected the application’s movable sleeve (highlighted in yellow) for lack of inventiveness under Exhibit 1 in light of Exhibit 2 (not shown), asserting that the protruding tube of Exhibit 1 (highlighted in green in Figure 2) used the same technical means as the movable sleeve and thus was only a simple variation of the mechanical assembly of the protruding tube.

Figure 1. Claimed invention

Figure 2. Exhibit 1 (prior art)

In Taiwan, inventiveness – as one of the patentability requirements – is subject to a test consisting of the following steps:

• determining the scope of the claim;
• determining the content of the prior art;
• ascertaining the technical level of the person having ordinary skill in the art;
• resolving the difference between the invention and the prior art; and
• considering whether the difference is easily achieved.

If the claimed invention as a whole cannot be easily achieved by a person having ordinary skill in the art (a fictional person who can perceive, understand and then use the prior art references available at the filing date) based on the prior art, it is inventive.

The IP Court vacated the TIPO’s decision. Although the technical problem to be solved by the claimed invention and the prior art was the same (ie, to prevent water leakage), the protruding tube was configurationally different from the movable sleeve. The former was fixedly connected to the faucet’s main body while the latter, as its name suggested, was an independent tube movable within a faucet main body with one end and engaged to the invented pivotable valve with another end. Further, by investigating the technical effect, the combination of prior art references would not necessarily guarantee the same result as that achieved by the invention at issue (ie, preventing water leakage if the faucet or connecting points of the pipe and the faucet were destroyed or removed). If the same situation arose with respect to the invention at issue, the pivotable valve (highlighted in red) would function to stop water flow after removal of the mechanically damaged movable sleeve (highlighted in yellow). Prior art references failed to attain the same technical result. Therefore, the prior art did not stand to challenge the inventiveness of the invention at issue, because the claimed invention was not easily achieved.

The IP Court noted that the examination of inventiveness is based on the entirety of the claimed invention, or a combination of the problem to be solved, the employed means and the effects in contrast to the prior art. Where the technical means employed differ – as in this case – it is especially important whether the prior art achieves the same proposed technical effect before determining obviousness or non-obviousness.

The IP Court also emphasised that a lack of inventiveness can be concluded only when all of the technical features of the claimed invention are disclosed by the prior art references or by common general knowledge. In this case, the claimed invention was not easily achieved in view of the prior art, owing to the invention’s distinctive configurational mechanism and additional technical effect.

The revised Patent Examination Guidelines have amended the aforementioned test to establish inventiveness, introducing the step of determining whether the claimed invention is easily achieved. In this new step, the examiner must first determine whether the combination is obvious, considering either the existence of a clear motivation to combine the primary and other auxiliary references or the fact that no such motivation is necessary. If this question is answered in the affirmative, the examiner must subsequently consider whether an argument for lack of inventiveness can be established in view of all of the factors combined (see Figure 3).

Figure 3. Determining whether a claimed invention is easily achieved

Looking closely at the factors where motivations to combine references are available, the examiner must consider each of the four factors. In a scenario where two or more references pertain to the same or a relevant technical field, generally one or more of the other three factors should be considered as well. Nevertheless, this does not rule out the possibility that the examiner may rely on only one powerful factor (if one exists) to make a conclusion on whether the combination of references is obvious.

In addition to determining whether the claimed invention is easily achieved, two other steps in the inventiveness test attract attention as a result of the revised examination guidelines.

In the third step – ascertaining the technical level of the person having ordinary skill in the art – such a person can actually be a group of fictitious persons (rather than an individual) if this is more appropriate, such as in a case of collaborative research involving an interdisciplinary technical team.

The fourth step – resolving the difference between the invention and the prior art – has also been amended. The revised Patent Examination Guidelines require the examiner to cite a single ‘primary reference’ in the same field or solving substantially the same problem among all of the other available references. This is required in order to avoid an examiner’s hindsight due to relevance between the prior art and the invention.

Inadmissibility of post-grant amendment using antonym to substitute technical features as granted

During an invalidation action, the patentee defended its granted patent by petitioning for post-grant amendment to the granted claims. The post-grant amendment was rejected as being found to substantially alter the granted scope; the patent at issue was then invalidated. The patentee appealed the invalidity decision all the way to the Supreme Administrative Court, which vacated the lower courts’ erroneous judgments. The case was remanded to the IP Court.

The patent at issue claimed a motor having a technical feature to “release excessive grease” from a space defined by a grease seal and a rotor. A dispute arose in which this feature was alleged to present different descriptions in two respective sections of the patent specification. In the invention summary section, the defined space was provided as being able to “recycle the released excessive grease”; while in the section listing examples, the same space was shaped with “multiple concaves and convex” which enabled the space to “retard the release of excessive grease”. According to the IP Court’s interpretation, the specification provided two different embodiments of the invention.

During the invalidation proceeding, the patentee petitioned for post-grant amendment in order to substitute the feature “releasing excessive grease” with “retarding the release of excessive grease” in the invention summary section. The IP Court deemed this substitution an alteration of the granted claim, which is prohibited in accordance with the Patent Act and the Patent Examination Guidelines. The court reasoned that when the space was not shaped with “multiple concaves and convex”, it was unable to “retard” grease release. Since the patent claim at issue failed to further define the space’s topology, the space should only be able to recycle – rather than retard – excessive grease. The IP Court thus rejected the post-grant amendment.

However, the court’s reasoning invited criticism – in particular, that the court was unable to fairly weigh all of the disclosures in the specification and drawings. As mentioned, the invention summary section only briefly and roughly mentioned the topology of the space; the topology was then described in further detail in the example section, which served to provide specific embodiments (in this case, a preferred embodiment presented as an example to retard grease release by the concave and convex topology). In addition, referring to the drawings, the space was shown with only one topological shape – concave and convex. With no other topologies available, it was conclusive that the claimed invention presented only one embodiment. The principle of validity presumption encourages patent claims to be interpreted as valid where possible. The court’s claim interpretation, which considered the patent specification as presenting two different embodiments while the drawings showed only one, seems to contradict this principle.

Despite the court’s decision and the dissenting opinions that followed, IP owners should still be mindful of the limitation of post-grant amendments to a patent. Pursuant to Section 67(1) of the Patent Act, post-grant amendment is permitted in the following circumstances:

• deletion of claims;
• narrowing down a claim scope;
• correction of obvious or translational errors; or
• clarification of ambiguous statements.

Further, Section 67(4) of the Patent Act stipulates that a post-grant amendment “shall not substantially broaden or alter the scope of the claim(s) as published”.

The Patent Examination Guidelines provide examples of amendments that may be deemed to broaden or alter the scope of claims. Cases of alteration include substitution of technical features by antonyms, redefinition of technical features, apparent changes to the subject matter of claims and – as introduced and emphasised by the recently revised examination guidelines – the “failure of newly added technical feature(s) to achieve the invention’s purpose”.

The technical purpose of an invention shall be construed in light of the entirety of the invention recited in each claim, in view of the problem to be solved, the proposed technical means and the technical effect in contrast with the prior art. If an amended claim “attenuates or fails to achieve” the invention’s purpose under the originally granted claims before post-grant amendment, the TIPO will consider such an amendment to be a prohibited alteration. On the contrary, the amendment will be permitted where the newly added technical feature successfully enables an amended claim to meet the invention’s purpose.

Unjust enrichment remedies in patent infringement litigation

In one patent infringement case the IP Court, instead of awarding damages, ordered the defendant to return unjustifiable gains that were attributable to the infringing products. The case was filed by the owner of a world-leading luggage brand against a large multinational engaged in the consumer electronics and entertainment business. The patentee alleged that the defendant, in order to promote sales of television sets, had given away the patented travel luggage free of charge along with each television set sold.

The defendant asserted that it did not exploit the patent, because giving away the luggage as a free gift was not ‘selling’, a prohibited infringing act. However, the court found that the actual cost of the gift was included in the price of the on-sale product (ie, the television); as such, the gift essentially contributed to creating more commercial interests. Therefore, the business model of ‘buy one, get one free’ could be considered as an ‘offer for sale’ or ‘sale’ as defined in the Patent Act. The defendant’s commercial acts were thus deemed to be infringing.

However, the real challenge arose when the patentee failed to prove the defendant’s mens rea (ie, intent or negligence), which is a prerequisite for the award of damages. The court recognised that the defendant did not engage in the manufacture, wholesale or retail of luggage products. Thus, according to the court, the defendant was required to bear only a “lower level of duty of care” to identify relevant patented technology in the same field.

The patentee then shifted to the grounds for unjust enrichment under Section 179 of the Civil Code, which stipulates that “in insufficiency of legal basis, one who gains interest while another is harmed shall return said interest”. The defendant had acquired the infringing luggage articles from another supplier, but at a lower price than it would have paid to the patentee for the authentic products; thus, the defendant effectively gained interest by saving the difference between the two prices. The court ruled that the patentee was harmed as a result of the defendant’s gifting of infringing products to consumers, thereby reducing the patentee’s prospective proceeds from implementing the patent. A causative relationship existed linking the patentee’s harm to the defendant’s gained interest, which was thus considered an unjust enrichment.

Certain key points from this case may be of interest to IP owners. First, although the defendant’s mens rea is required for the patentee to claim damages based on the tort theory under Section 96(2) of the Patent Act, this does not mean that a demonstration of mens rea is the only way to obtain monetary compensation. In particular, a finding of unjust enrichment does not require the defendant’s mens rea. This is one of the few Taiwanese cases to confirm that unjust enrichment is an admissible ground in patent infringement litigation.

Second, the patentee successfully persuaded the court to confirm that giving away patented gifts constitutes an infringing act under the Patent Act. A free gift attached to the main product to be sold is not in fact free; rather, it does incur costs and adds value to the product.

Finally, the patentee did not tag or label its products with any patent numbers. The outcome of the damages claim might have been different had the patentee done so, as this would lead to the presumption of an infringer’s wilfulness to infringe. As such, patent owners are advised to include patent numbers on their websites and in product specifications, user’s manuals and labelling, since this will facilitate damages claims in the event of patent infringement litigation.

Kevin C W Feng assisted in the preparation of this chapter.

TSAI, LEE & CHEN Patent Attorneys & Attorneys at Law

11th Floor, 148 Songjiang Rd

Taipei 104

Taiwan

Tel +886 2 2564 2565

Fax +886 2 2562 7650

Web www.tsailee.com

Crystal J Chen

Partner

[email protected]

Crystal J Chen is a partner at Tsai Lee & Chen. She is admitted to the National Bar of China and the New York State Bar. With a practice spanning 20 years, she has covered all areas of IP law. She counsels on patent prosecution and is involved in enforcement actions relating to copyright, designs, patents, trademarks and unfair competition.

Ms Chen received an LLM from the University of New Hampshire School of Law. She is a member of the American IP Law Association, the American Bar Association, the IP Owners Association and the Beijing Bar Association. She is the chair of delegates for independent members of the International Association for the Protection of Intellectual Property.