APAA Patents Committee

November 18, 2007Adelaide Convention Center

Adelaide, Australia

Casey An

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1. What is patent?

A. Award to Inventor in exchange for his contribution to the society

B. What contribution?i. Early ages : Introduce new technology into the

society

ii. 18th Century : Add to the sum of technical knowledge in the society

iii. These days : Add to national competitiveness in the

global market

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2. What is patentable invention?

A. Hotchkiss v. Greenwood (1851)"… that degree of skill and ingenuity which constitute essential elements of every invention" "invention" was a legal term signifying patentable inventions

B. 1952 Patent Act"Nonobviousness" requirement was added (§ 103). Thus, an invention must be new, useful and nonobvious in order to be patentable.

C. Graham v. John Deere (1966)"… the §103 condition lends itself to several basic factual inquiries." Graham Factors

United States

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3. Nonobviousness in the Patent World

A. Differing Namesi. Nonobviousness: USii. Inventive Step: EPO, PCTiii. Progressiveness (進步性 ): JP, KR, TWiv. Creativeness (創造性 ): CN

B. Similar Definitions… involve an inventive step if … it is not … obvious to a person skilled in the art (PCT Art. 23)

C. Differing doctrines/testsi. Test differs country by countryii. Test changes even in a same jurisdiction (e.g. U.S. TSM test) iii. Nonetheless, there are some level of common understanding

in the patent world

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Precisely comprehend the state of the art Always consider what a person skilled in the art would do If the reasoning that a person skilled in the art could have

easily arrived at the claimed Invention based on cited inventions can be made, the inventive-step shall be negated.

4. JPO Examination Practice

Art. 29 (2) : Where, prior to the filing of the patent application, a person ordinarily skilled in the art of the invention would have been able to easily make the invention based on an invention prescribed in any of the items of the preceding paragraph, a patent shall not be granted…

Japanese Patent Act

JPO Examination Guidelines

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• Is motivation to arrive at the claimed invention provided in the cited reference?

• Advantageous effects of invention shall be taken into consideration

<Motivation is recognized under the following conditions>

(1) Relevancy in technical fields

(2) Common problem to be solved

(3) Common function/operation

(4) Suggestion in the cited reference

4. JPO Examination Practice

Examiner’s broad discretion (flexibility) in reasoning:

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4. JPO Examination PracticeEven if conditions (1) to (4) are not met, still reasoning may be affirmed, if claimed invention is:

– Selection of optimal material from known materials– Ordinary design modification – Mere aggregation of features

<Criteria added in 2000>• Common "problem to be solved" is not a mandatory factor • Even if cited reference discloses no identical problem, motivation may still be found so long as the problem is obvious/ easily conceivable by a person skilled in the art• Effects of invention should not be taken into consideration, unless

the asserted effects are disclosed in or can be inferred

from the original specification and drawings• Skilled in the art may be plural artisans

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Problem-Solution Approach

(1) determine the "closest prior art";

(2) establish the "objective technical problem" to be solved; and

(3) consider whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

(Guidelines for Examination, Part C, Chapter IV, Item 9.8)

Art. 56: An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

5. EPO Examination Practice

European Patent Convention

EPO Examination Guidelines

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6. USPTO Examination Practice

§103: A patent may not be obtained…if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill In the art…

U.S. Patent Act

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6. USPTO Examination Practice

(1) determine the scope and content of the prior art;

(2) ascertain the differences between the prior art and the claimed invention;

(3) resolve the level of skill in the pertinent art; and

(4) evaluate evidence of any secondary consideration.

Secondary consideration: mandatory Commercial success Long felt but unsolved needs Failure of others

Graham Factors

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Teaching-Suggestion-Motivation (TSM) test

6. USPTO Examination Practice

• CAFC established TSM test, seeking to resolve the obviousness question with more uniformity and consistency.

• Patent claim is only proved obvious if (1) the prior art,

(2) the problem’s nature, or (3) the knowledge of PHOSITA reveals some motivation or suggestion to combine the prior art teachings.

US Case Law

TSM test has been applied rather rigidly

such that establishing obviousness seems to require suggestion in the prior art which discloses the same problem as that of the claimed invention

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Burden of Proof for the Examiner (Prima Facie case of obviousness)

6. USPTO Examination Practice (Aug. 2006)

The examiner should satisfy three criteria:

(1) There must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings;

(2) There must be a reasonable expectation of success; and

(3) The prior art reference (or references when combined) must teach or suggest all the claim limitations.

(MPEP 706.02(j), referring to In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991))

USPTO Examination Guidelines

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Burden of Proof for the Examiner

(Prima Facie case of obviousness)

6. USPTO Examination Practice (Sep. 2007)

(TSM related statements have been removed.)

USPTO Examination Guidelines

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7. Topical Issues

Patent Quality

Cooperation among Offices

Patent Law Harmonization

A

B

C

Casey Kook-Chan AnKim & Chang, Seoul, Korea

Telephone: + 82-2-3703-1207 E-Mail: kcan@ip.kimchang.com