眾律國際法律事務所/眾律國際專利商標事務所

專利進步性之判斷（二）—美國判例於進步性之原則專利工程師  /  陳詠容

Discretion of whether such patent has useful improvement to the existing solution (2) – improvement to the existing solution principles in Taiwan – Patent Engineer Yung-Zhong Chen

呈上篇，2007 年美國最高法院於 KSR v. Teleflex 案[1]除了重申Graham判決提出的分析方法應為廣泛、彈性，更指出TSM 檢測法之運用不宜僵化^[2]，認為[3] (1) 引證案不應侷限於所欲解決的問題相同：在探求一專利請求項是否具備非顯著性時，應以請求項之客觀範圍為判斷標的，而非專利權人企圖解決什麼問題上或受到什麼特定的啟發 。縱然先前技術解決的問題，未必與爭議發明完全相同，不能僅因引證專利主要目的與爭議專利標的不同即不考慮以引證專利所揭露之技術作為證據；(2) 先前技術應涵蓋所有技術領域：且一位通常知識者在面對問題時有可能利用的所有解決方式，因此不應將技術領域侷限於該發明之所屬領域； (3) 「教示、建議或誘因」的考量不應僅限於先前技術：市場改良的渴望與顧客的需求所形成的市場力量，亦可形成新發明技術的因果關係；(4) 可預見之成功並非發明：一個擁有通常技術的人因市場需求而採取某種解決方式，而創造出原先預期之成功時，這不是發明而是常識，為顯而易見的嘗試(obvious to try)，不符進步性應為非顯而易見之規定。

From the previous article, in the case of KSR v. Teleflex (2007), is a decision by the Supreme Court of the United States concerning the issue of obviousness as applied to patent claims. There should be broader obviousness evaluation established in Graham with some flexibility on its “teaching-suggestion-motivation” (TSM) test. Elements include the following:

(1) The citing reference should not be restricted to merely solving problems but to examine whether such patent has useful improvement to the existing solution. Examiner should examine base on its objective claiming, not to merely look at the inspiration made by patentee when resolving issues. Despite its prior art has resolved some of the issues, it is not necessary the same with the current patent application in dispute. Examiner cannot examine its application base on its differences in terms of its purposes or patent objectives in dispute, but to merely consider the disclosed citing reference as evidence for comparison; (2) its prior art covered all the technology field, this include to resolve issues that a person of ordinary skill in the art would have done to combine the prior art elements to the current matter; (3) teaching, suggestion and motivation should not be restricted to its prior art but to adjust its claim in accordance with market’s desire of improvement and client needs in the market; so as to create a correlation of its new design and its technology; (4) such success is foreseeable, not necessarily to its invention: under general circumstances, a technical person would adjust its problem solving solution in accordance to its market needs and for which is foreseeable in advance would not be considered as an invention but as common sense. The reason behind this is that ‘obvious to try’ does not fulfill the improvement to the existing solution principle requirement.  

KSR案使得非顯而易見性在進步性的審查上較為嚴格，請求項易受到先前技術之挑戰，新申請之專利取得趨於困難，而已取得專利之申請案則易於遭受不具進步性而撤銷其專利權之挑戰[4]。而如欲舉證專利權不具進步性，發明人在專利所屬技術領域所受之訓練或教育程度、對系爭發明之成功的合理預期或發明是否由常用的研發方式研發出來，皆成為KSR案後得做為判斷因素之證據。

From the case of KSR, we can know that there seems to have a strict restriction in terms of making its discretion of whether such patent has useful improvement to the existing solution. Such claim can be easily challenged with its prior art and makes it harder to grant its application that the invention does not have improvement to the existing solution. If evidence shows that such patent does not have any improvement, factors would be taken into accounts in terms of its patent designer’s training skills and education, disputed invention of a reasonable expectation of success would be analyzing factors after case of KSR.

[1] 550 U.S. 398, 419-22 (2007).

[2] 參顏吉承，美國 KSR 案判決對我國進步性審查之啟示，智慧財產權月刊，第105 期 ，2007年，頁17-21。

Ji-Cheng Yan (2007), KSR case in America which is a reflection of Taiwan’s concerning issue of obviousness as applied to patent claims. Intellectual Property Monthly. 105, Page 17-21.

[3] 參沈宗倫、何皓華、潘玉蘭，以美國聯邦最高法院KSR 案為借鏡再建構我國專利法下專利進步性要件之合理詮釋，行政院國家科學委員會專題研究計畫(NSC 99-2410-H-004-222)，2011年10月21日。

Zong-Lun Chen., Hao-Hua He., Yu-Lan Pan (2011, October). Uses the KSR case made by the Supreme Court of the United States as reflection on restricting Taiwan’s Patent Law and the issue of obviousness as applied to patent claims. National Science Board Task Research Project (NSC 99-2410-H-004-222).

[4] 參張啟聰，KSR案及其對美國專利實務造成之影響，科技法學評論，第5卷1期，2008年，頁251-253。

Qi-Chong Zhang (2008), The case of KSR and its influence on United States in practice Technology Law Review (5)1, Page 251-253.