Navigating Inventiveness Assessment in Taiwan: Insights from Recent Court Decisions

Abstract The assessment of patent inventiveness in Taiwan is a multi-faceted endeavor, influenced by a confluence of legal standards and court practices. This opinion aims to elucidate the principles governing inventiveness assessment, dissect relevant court decisions and unravel the practical implications for applicants and patentees. This opinion includes the following. 1. An overview of inventiveness assessment: a foundational overview of the criteria and standards underpinning inventiveness assessment in Taiwan is provided. 2. Analyses of recent cases in different technical fields: delving deeper, we navigate through a series of recent case analyses spanning diverse technical fields, including the chemical, mechanical and pharmaceutical sectors. Through meticulous examination of court judgments, we discern the nuanced approaches employed in evaluating inventiveness across various fields. 3. Suggestions according to the cases: finally, based on the court judgments we provide our suggestions and strategies in various aspects for applicants and patentees. In synthesis, although the framework on inventive step in the current Taiwan Patent Examination Guidelines is clear, its implementation in court rulings varies depending on the specific technical field in Taiwan. Patents in different technical fields often have distinct logical considerations and focal points in the assessment of inventive step. Therefore recent landmark court decisions in Taiwan on inventiveness in various technical fields are introduced, and our specific recommendations are presented, in order to offer readers clearer guidance.