Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Summer 2008, Volume 15, Issue 2

Non Obviousness and Inventive Step Requirements in the United States, Europe, Japan, Korea, and Thailand (for Combination Inventions)

by Amanda Carmany-Rampey, Tatsuo Takeshige, Hyung-Geun Ji and Sirimas Rianrungrueng

I. Introduction

The non-obviousness/inventive step requirement serves to establish the minimum level of innovation over the prior art that is necessary for obtaining a patent. One of the goals of the agreement for Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) is to foster international uniformity in patents by directing that “patents shall be available for any inventions, whether products or processes in all fields of technology, provided that they are new, involve an inventive step and are capable of an industrial application.”[1] TRIPS establishes minimum requirements for patentability, allowing the individual signatory countries to set their own standards for novelty, inventive step, and utility.

This paper examines the non-obviousness/inventive step requirements in the United States, Europe, Japan, Korea, and Thailand, with a particular emphasis on how the standards of patentability are applied to combination inventions. A comparison of the non-obviousness/inventive step requirements for the United States, the European Patent Office (EPO), Japan, Korea, and Thailand reveals a similar focus on the person having ordinary skill in the art (PHOSITA). Patentability depends on whether the invention would have been obvious to, or easily made by, person having ordinary skill in the art. Despite similarities in non-obviousness/inventive step requirements, the countries examined here employ different approaches to assess whether the standard has been met, however. The EPO and Thailand follow the “problem-solution approach,” which looks at the objective problem solved by the invention, while the United States, Japan, and Korea ask whether the differences between the invention and the prior art would have been obvious to or easily made by the person having ordinary skill in the art.

Most inventions build upon the prior art either by adding novel elements or by combining known elements in novel ways. Inventions that embody novel combinations of prior art elements, referred to here as “combination inventions,” can present unique challenges when assessing non-obviousness/inventive step. Hindsight, or complete after-the-fact knowledge of the invention, can influence whether a combination is determined to be sufficiently inventive to warrant patent protection. Proper application of the non-obviousness/inventive step standards in the United States, the EPO, Japan, Korea and Thailand all require that hindsight be excluded from the analysis, even though it may be inherent to the method of analysis used.[2]

A common problem with the various systems is that novel combinations, which do not result in a new or unexpected effect, may be barred from patentability, even if they represent a significant advance in the art. The perceived ease of making the combination may disqualify an invention from patentability, especially when hindsight is inherent in the method used for assessing the inventive step. While objective evidence of non-obviousness, also known as secondary considerations, are considered by the countries examined here, no special consideration is given to their role in countering hindsight for combination inventions. Therefore, this paper proposes that the increased danger of hindsight influencing determinations of non-obviousness/inventive step for combination inventions calls for greater emphasis to be placed on secondary considerations when assessing the patentability of combination inventions.

II.United States

A.Non-Obviousness

1. Background

a) Historical and Statutory Basis of the Non-Obviousness Requirement

The long history of patent law in the United States dates back to its foundation in the Constitution.[3] The non-obviousness requirement for patentability, however, is a relatively recent addition to the U.S. patent code. Prior to the enactment of 35 U.S.C. §103(a) in 1952, the inventiveness requirement was a judicially developed doctrine. The Supreme Court first articulated the inventiveness standard in1850 in Hotchkiss v. Greenwood, specifying that patent protection is only justified for inventions that exceed the ability of a “skilful mechanic.”[4] In the years following Hotchkiss, the judicial inventiveness requirement became exceedingly stringent, with the development of negative tests for invention, culminating in the requirement that an invention be the product of a “flash of genius.”[5]

Section 103(a) of the Paten Act was enacted to clarify the minimum standard of inventiveness and to counter what was seen as unnecessarily restrictive judicial doctrines.[6] As a result of long judicial history of restrictively defining “invention,” §103(a) purposely avoids requiring “invention” or an “inventive step” and instead merely requires that the invention, “as a whole,” be non-obvious.[7] Under 35 U.S.C. §103(a), an invention is obvious, and thus not patentable, “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 to which the subject matter pertains.”[8] Section 103(a) expressly forbids the use of hindsight in evaluating non-obviousness, requiring that determinations of obviousness be conducted “at the time the invention was made.” Additionally, the “flash of genius” standard was expressly eliminated by the second sentence of the §103(a), which specifies that “[p]atentability shall not be negatived by the manner in which the invention was made.”[9]

b) Examination of Non-obviousness and the Graham Factors

Determinations of obviousness under §103(a) are questions of law based on underlying factual inquiries. In Graham v. John Deer Co., the Supreme Court interpreted §103(a) as codifying the basic patentability requirements articulated in Hotchkiss and set out the four basic factual inquiries relevant to determinations of obviousness, known as the Graham factors.[10] The first Graham inquiry is into the “scope and content of the prior art.” For prior art to be considered for this inquiry, it must be analogous. The second Graham inquiry is into the differences between the claimed invention and the prior art. The third Graham factor asks whether based on what was known in the prior art, the novel features of the invention would have been obvious to a person having ordinary skill in the art. Finally, Graham directed that “secondary considerations such as commercial success, long felt but unresolved needs, and failure of others, might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. [11] The Graham factors must be weighed on a case-by-case basis, suggesting that inquiries into obviousness are qualitative, not quantitative. [12]

When evaluating patentability, the U.S. patent examiner bears the initial burden of establishing a “prima facie case of obviousness” based on the application of the first three Graham factors.[13] The “prima facie case of obviousness” is a procedural tool for allocating the burden of proof during patent examination, once the examiner meets the initial burden of establishing that an invention is on its face obvious, then the applicant has the burden of producing evidence, such as secondary considerations, to rebut the prima facie case of obviousness.[14] Once the applicant comes forward with evidence challenging the prima facie case of obviousness, the Graham analysis must begin anew, and all factors concerning non-obviousness are weighed to determine if the invention would have been obvious.[15] If the examiner cannot establish a prima facie case of obviousness, then the applicant is entitled to a patent provided all other requirements are met. [16]

c) The Role of the Person Having Ordinary Skill in the Art

Obviousness determinations are always made from the “vantage point of the person having ordinary skill in the art which the patent pertains.”[17] The person of ordinary skill in the art is not the inventor, or any other living person, but a legal construct, which presumes knowledge of all prior art references within the same field (analogous art) as the invention. The level of skill in the art can have a profound influence on determinations of obviousness, since more innovations will appear obvious to one having a high level of skill as opposed to one having less skill. Like non-obviousness, determination of the level of ordinary skill in the art is a legal conclusion based on factual inquiries.[18] Six factors are considered when assessing ordinary skill in the art: (1) the inventor’s educational background; (2) the kinds of problems confronted in the art; (3) the solutions found previously; (4) the level of sophistication in the technology; (5) the speed of innovation in the art; and (6) the education level of active workers in the field.[19] These factors are not given definitive weight, since not all factors will apply in any one case and depending upon the situation, one factor may dominate over the others.

2. Application of Non-Obviousness Requirement to Combination Inventions

a) Combination Inventions and Examining the Invention “As a Whole”

The non-obviousness requirement does not specifically address the patentability of combination inventions, however, §103(a) requires that obviousness be assessed for the invention “as a whole.” Therefore, a combination invention may not be “proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”[20] The Federal Circuit, has interpreted 35 U.S.C. §103(a) to require no special scrutiny for combination inventions. Under Federal Circuit precedent, combination inventions are evaluated for obviousness by determining whether the invention “as a whole” would have been obvious at “the time the invention was made to a person having ordinary skill in the art.”[21]

The U.S. Supreme Court, however, has historically been skeptical of the patentability of combination inventions in the absence of evidence “teaching away” the prior art or an unexpected result or “synergy” from the combination of known elements.[22] Recently, the Supreme Court revived skepticism over the patentability of combination inventions in KSR International Co. v. Teleflex Inc. [23] In its decision, the court indicated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”[24] Since the Supreme Court is the ultimate judicial authority in the United States, the KSR decision has raised questions about whether combination inventions should receive special scrutiny.[25]

b) The TSM Test and Applying Graham to Combination Inventions

Despite judicial skepticism over the patentability of combination inventions, inquiry into the Graham factors is a necessary first step in determining obviousness. However, assessing obviousness “at the time the invention was made” can be especially challenging for combination inventions due to the intrusion of hindsight into the analysis. Once the invention is known, the danger is that with hindsight, the invention itself can act as a roadmap to assemble the prior art. To guard against the problem of hindsight, the Federal Circuit developed the teaching, suggestion, motivation (TSM) test, which requires that when obviousness is based on the combination of known elements, there must be an articulable reason or motivation to combine the prior art elements in the manner taught by the invention.[26] Under the classic TSM test, there are three possible sources of motivation to combine references to establish a prima facie case of obviousness: (1) a teaching or suggestion to combine found in the prior art; (2) the nature of the problem to be solved; and (3) the knowledge of the person having ordinary skill in the art.[27] In the absence of a motivation to combine known elements to achieve the claimed invention, a prima facie case of obviousness cannot be established and the invention is not barred by §103(a).

In KSR, the Supreme Court held that a rigid application of the TSM test, which relies solely on the content of the prior art for the motivation to combine elements, is incompatible with Supreme Court precedent and unnecessary to prevent hindsight analysis.[28] While the Supreme Court acknowledged that a flexible approach to the TSM test could complement the Graham analysis, the Court directed that combination inventions do not require special consideration to avoid hindsight analysis.[29] Thus, the Court did not completely abolish the TSM test and it remains necessary to identify a motivation to combine prior art elements when obviousness rejections are based on the specific combination.

KSR relaxed the requirements for finding a motivation to combine elements by instructing that the requisite motivation could be found in commercial considerations, such as the desire to improve a product or to solve a problem. Then “ordinary creativity” and “common sense” would lead the person having ordinary skill in the art to combine prior art elements and make any necessary modifications within their technical ability.[30] Under this relaxed standard, the TSM test is easily satisfied and a prima facie case of obviousness can be established whenever known elements from analogous art are combined to yield a predictable result. The Supreme Court indicated that the apparent obviousness of a combination may be overcome by evidence that the combination yielded a synergistic effect, had unexpected results, or if the prior art would teach away from the combination. The Court did not address the role of secondary considerations in assessing the obviousness of a combination invention and it is unclear if objective evidence of non-obviousness, such as long-felt but unresolved need or commercial success would be sufficient to overcome the presumption of obviousness when the combination does not yield a synergistic effect or unexpected result.

Under the “flexible approach” to the TSM test advocated by the Supreme Court in KSR, the problem that the invention addresses can provide the motivation, in conjunction with the common sense of the PHOSITA, to combine the prior art elements in the manner taught by the invention.[31] For example, the invention in In re ICON Health and Fitness, Inc. involved the use of a gas spring to assist in folding the base of a treadmill and stably retaining the base in the folded position.[32] The elements of the invention, the folding treadmill and the gas spring, were known in the prior art; however, the gas spring had been used in connection with a folding (Murphy) bed. Looking to the problem that the inventor was trying to solve, the Federal Circuit declared that combining a gas spring with a folding treadmill base was obvious because “it generally addresses problems of supporting the weight of such a mechanism and providing a stable resting position.”[33] By addressing the same problem as the invention, the Murphy bed was considered analogous art, which “goes a long way towards demonstrating a reason to combine the two references.”[34]

The Federal Circuit in In re Icon took a narrow view of what constituted a “teaching away” from the combination. The court found that the person having ordinary skill in the art would have been motivated to adapt a “device borrowed from the prior art,” so a failure of the device to meet the needs of the current invention did not necessarily teach away from the combination.[35] Therefore, for simple mechanical inventions it may now be sufficient, in the absence of a synergistic effect or unexpected results, to show that all elements of the invention are known in the art or in analogous arts to prove a combination obvious.

3. Secondary Considerations as a Guard against Hindsight

a) The Role of Secondary Considerations in Evaluating Non-Obviousness

In Graham, the Supreme Court directed that once the first three Graham factors are applied to assess the “obviousness or nonobviousness of the subject matter,” then secondary considerations such as “commercial success, long felt but unresolved needs, failure of others, etc…,” may be relevant as additional evidence to be weighed in the determination.[36] In addition to the factors listed in Graham, other secondary factors have been considered as objective evidence of nonobviousness, including the skepticism of others in the field, industry acclaim, copying of the patented invention by infringers, and success at obtaining licenses.[37] While Graham suggested that secondary considerations are not part of the primary analysis of non-obviousness, the Federal Circuit has treated secondary considerations as a fourth Graham factor, requiring them to be weighed along with the first three Graham factors when they are available.[38]

Even though secondary considerations must be considered, they do not necessarily control the analysis and their weight varies on a case-by-case basis.[39] Additionally, the applicant must show a nexus, or a connection, between the secondary consideration offered as evidence of non-obviousness and the innovation the invention represents over the prior art in to establish relevance.[40] For combination inventions, even extensive evidence of secondary considerations like commercial success and praise in the field may be ineffective in rebutting a prima facie case of obviousness based on the first three Graham factors.[41] For example, the Federal Circuit declared in a case anticipating the KSR decision that “[t]he presence of certain secondary considerations [in this case commercial success] of non-obviousness are insufficient as a matter of law to overcome our conclusion that the evidence only supports a legal conclusion that the claim would have been obvious.”[42] This suggests that unlike primary evidence that a combination is non-obvious, like unexpected results, synergy, or a teaching away; secondary considerations may not bear enough weight to overcome the presumption that combinations of prior art elements are obvious.

III. Europe

A. Inventive Step at the European Patent Office

1.Background

a) Origins of the European Patent Office

The European Patent Office (EPO), which began its work in 1978, was established by the European Patent Convention to centralize and harmonize the prosecution of patents among the contracting countries. The EPO, however, does not act as a centralized enforcement body and patents granted by the EPO must then be filed in the individual contracting states. Patents granted by the EPO can be thought of as a bundle of independent national patents, which are nationally enforceable and nationally revocable. Furthermore, patents granted by the EPO are subject to the national law of the state in which they are filed. Whether an invention meets the patentability standards for a contracting state, and is thus enforceable, is solely a matter of national patent law. For example, the level of inventive step required for obtaining a European Patent reflects neither the highest nor the lowest standard of inventiveness required by the contracting countries, but falls in the middle of the range.[43]

b) Statutory Requirements for an Inventive Step

The material requirements for patentability are laid out in Article 52(1) of the European Patent Convention, which states that “European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.” This parallels the novelty and utility requirements of 35 U.S.C. §101, the non-obviousness requirement of 35 U.S.C. §103(a), and fulfils the minimum standards of patentability required by TRIPS. Similar to the U.S. non-obviousness requirement, under the European Patent Convention, “[a]n 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.”[44] Obviousness is defined as “that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art.”[45] This is similar to the inventiveness standard articulated by the U.S. Supreme Court in Hotchkiss v. Greenwood, which required an invention to exceed the ability of the “skilful mechanic.” Unlike the person having ordinary skill in the art in the United States, who is an imaginary individual, the person skilled in the art under the European Patent Convention may be a team of experts, including experts in analogous fields.[46]

c) Examination Guidelines for Assessing Inventive Step, The Problem-Solution Approach

The method employed by the EPO for determining whether an invention contains an inventive step is the problem-solution approach.[47] The problem-solution approach is derived from European Patent Convention Rule 27(1)(c), which requires that the applicant “disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood.”[48] The focus of the problem-solution approach is on the technical problem and solution posed by the invention, and is intended to provide an objective assessment of the inventive step, which does not take into consideration the individual elements of the invention.[49]

Assessment of the inventive step under the problem-solution approach involves three steps. First, the closest prior art is determined.[50] The closest prior art is a single reference, which discloses a combination of features representing the best hypothetical starting point for an obvious step to the invention and is directed at the same purpose as the invention; it generally corresponds to the prior art reference that requires the least amount of modification to arrive at the claimed invention.[51] After the closest prior art is identified, the differences between the closest prior art and the claimed subject matter can be determined. Only those features of the invention that address the objective technical problem will be considered when assessing the inventive step and all other differences will be ignored.[52] Second, the problem-solution approach requires establishing the “objective technical problem” to be solved.[53] The “objective technical problem” is based on the differences between the technical results achieved in the invention and the closest prior art, which may be different from the problem the inventor was trying to solve and can be interpreted broadly to include more cost-effective alternatives to existing devices.[54] The third and final step is “considering 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.”[55] The third step is intended to determine not whether the person skilled in the art “could” have arrived at the technical solution embodied in the invention, i.e. that it was within their technical ability, but rather if the person skilled in the art “would” have arrived at the technical solution embodied in the claimed invention.[56]

The focus on the objective technical problem in the third step of the problem- solution approach is similar to the TSM test employed by the Federal Circuit in In re ICON Health and Fitness. This approach examines whether the person skilled in the art would have been motivated, when faced with the objective technical problem and taking into account the teachings of other prior art references and the general knowledge in the field, to modify the closest prior art in the manner claimed. If after applying the problem-solution approach, it is determined that the person skilled in the art would have been motivated to modify the closest prior art by combining the closest prior art with other prior art elements directed at solving a parallel problem, then the invention lacks an inventive step and is thus not patentable.

d) Hindsight in the Problem-Solution Approach

Hindsight is necessarily a factor in the problem-solution approach since the closest prior art is chosen based on knowledge of the invention. In choosing the closest prior art, no consideration is given to whether the person skilled in that art would have actually used the closest prior art as a starting point for innovation.[57] The closest prior art is then used to formulate the objective technical problem. Although the objective problem should be formulated without reference to the invention, since it is derived from an ex post determination of the state of the art, the objective technical problem is necessarily rooted in hindsight.[58] Nonetheless, it is error under the problem-solution approach to formulate the technical problem so that it points to the solution.[59] This may be a problem where the inventive step involves recognizing the problem, which can then be solved by an obvious solution. In this case, the objective technical problem may need to be formulated more broadly.[60]

2. Application of Inventive Step analysis to Combination Inventions

Similar to the requirements in the United States, a claimed invention must be considered “as a whole,” when determining the existence of an inventive step.[61] Therefore, an invention may not be proved to lack an inventive step merely by demonstrating that the invention is a combination of prior art elements. However, the EPO guidelines distinguish between inventions that are “combinations” and inventions that are merely an “aggregation or juxtaposition of features.”[62]

A combination may be shown to lack an inventive step if there is a motivation to combine the prior art elements in the manner claimed by the invention, however, the need to combine multiple references may be taken as evidence that the combination would have been non-obvious.[63] A motivation to combine the elements may easily be found, however, if the prior art comes from related technical fields or if the references address the same general problem or are within the common general knowledge of one skilled in the art.[64]

An invention is considered an aggregation if the individual elements of the invention do not work together to solve a common technical problem. Due to the nature of the problem-solution approach, inventions that merely aggregate features that are known in the prior art cannot possess an inventive step. The person of skill in the art would necessarily have been motivated to combine the individual elements out of a desire to solve the aggregated partial problems. Therefore, an invention that merely aggregates or juxtaposes prior art elements without achieving a synergistic effect may be proved to lack an inventive step, merely by demonstrating that the individual solutions to each partial problem is obvious. Thus, combination inventions as defined in KSR as “[t]he combination of familiar elements according to known methods …[to] yield predictable results,”[65] would necessarily be obvious under the problem-solution approach, regardless of whether it would have occurred to the person of skill in the art to make the combination.[66]

The EPO guidelines also implicitly differentiate between inventions that build upon the prior art by combining known elements to address a common technical problem and what is termed “true combinations,” where the individual elements work together to produce a synergistic effect. As opposed to aggregations or juxtapositions, a combination invention exists when the individual elements in the combination address a common technical problem.[67] A “true combination” occurs if the individual elements, when combined, work together to address the common technical problem and produce an effect that is greater than the sum of the individual features acting alone.[68]

Evidence that the combination of features produces a new synergy is considered very strong evidence that the combination involves an inventive step. Similarly, a combination invention may have an inventive step if a new or surprising technical effect results from the combination of known elements.[69] However, if there are no alternatives to the combination, the presence of a “bonus effect” is not sufficient to confer an inventive step.[70]

3. The Role of Secondary Indications in Establishing an Inventive Step

a) Weight given to Secondary Indicators of non-obviousness

Secondary indicators of non-obviousness are relevant to the third step of the problem-solution approach, which requires determining whether the invention, in light of the closest prior art and the technical problem to be solved, is obvious to one skilled in the art. Secondary indications of non-obviousness are particularly relevant in determining whether the person skilled in the art would, as opposed to could, have made the claimed modifications to the closest prior art to solve the objective technical problem. Indicators of the presence of an inventive step considered by the EPO include: evidence that a combination of features yields an unexpected or synergistic technical effect, evidence that a combination or modification resulted in a technical advantage despite a teaching away in the prior art, and evidence that the invention “fulfills a long-felt need” in the technical field, especially when there is evidence that others tried and failed to achieve the technical solution embodied in the invention.[71] Commercial success may also be considered, however, it is generally not thought to be a reliable indicator of non-obviousness, unless the evidence of commercial success is coupled with evidence of long-felt need and a nexus between the success and the problem solved.[72]

The presence of secondary indicators of non-obviousness may be particularly useful when the technical solution presented by the invention is an improvement or simplification of the closest prior art through a novel application of known technology. For example, in what might be a rare case, the Technical Board of Appeal strongly considered secondary indicators of non-obviousness when evaluating whether the use of a PTC resistor in a thermal cutter for plastic food wrapping possessed an inventive step.[73] The objective technical problem presented by the prior art was determined to be creating a thermal cutter that was simple, yet was capable of precise temperature control to avoid combustion, which results in toxic fumes and ash. The technical solution of the claimed invention employed a PTC resistor, which has the known advantage of being temperature self-limiting, allowing for precise temperature control of the heating element. While the novel combination of a known device according to its known advantages with the closest prior art necessarily indicates that no inventive step exists under the problem-solution approach, the Technical Board of Appeals held that strong evidence of secondary considerations indicated that the combination possessed an inventive step.

The board found evidence that others in the field had tried and failed to solve the objective technical problem of the invention particularly persuasive, especially since those skilled in the art overlooked the use of a PTC resistor in favor of more complicated and expensive temperature control systems. The board also found that evidence of a long-felt need was enhanced due to the relation of the technical problem to the health of the users of thermal cutters, creating an enhanced incentive to improve the state of the art. Additionally the board considered the commercial success of the invention since it was linked to a long-felt need in the field and was due almost exclusively to the technical advantages of the invention over the prior art. In reaching its decision, the board cited the danger of discounting a superior result, especially when in retrospect it is surprising that no one in the art recognized the simple solution before.

Although secondary indicators of non-obviousness may be considered, they are usually accorded very little weight in relation to an assessment of the technical effects of the invention compared to the state of the art.[74] Evidence of commercial success is generally not considered and may only be relevant in very close cases.[75] Additionally evidence that skilled workers in the field did not solve a known problem is not necessarily considered a reliable indication that the solution embodied in the invention was non-obvious.[76] For example, the Legal Board of Appeal for the EPO was not persuaded that an improvement in trailer braking systems possessed an inventive step, even in the face of evidence that the field had been stagnant for eight years prior to the invention.[77] The Legal Board held that the “presence of bonus effects or advantages and of secondary indications of the presence of inventive step (e.g. age of documents) is no substitute for the technically skilled assessment of the invention vis-à-vis the state of the art.”[78] The preference for a “technically skilled assessment” of the inventive step over the objective evidence of non-obviousness offered by secondary factors seems to be the standard for assessing the non-obviousness of combination inventions.[79]

b) Secondary Indicators should be Employed to Counter the Influence of Hindsight

The advantage to the problem-solution approach as a method for assessing inventive step is that it offers a structured and predictable analysis.[80] This is of particular concern for the EPO, since the patents that it grants will be subject to the varied patentability standards of its contracting countries.[81] However, the challenge of the problem-solution approach is devising the objective technical problem without reference to the invention, even though the invention dictates the choice of the closest prior art. Since hindsight is necessarily a factor in the problem-solution approach, secondary indicia of non-obviousness should play a larger role in informing the third step of inventive step analysis, determining whether the person skilled in the art would have found the technical solution claimed by the invention obvious.

Secondary considerations act as objective evidence that can aid the examiner in determining whether the invention possesses non-obvious technical advantages over the state of the art. Since the problem that the invention solves is necessarily based on ex post knowledge of the invention, inventions that build upon the prior art through a novel combination of known elements, in the absence of a synergistic or unexpected effect, are presumptively obvious regardless of whether the combination would actually occur “in the normal progress of technology.”[82] Objective evidence of non-obviousness can act as an important check to the hindsight that necessarily influences the problem-solution approach, especially in regard to combination inventions. This would add rigor to the third step of the problem-solution approach, which is intended to determine whether the person skilled in the art would, as opposed to could, make the claimed invention.

IV. Japan

A. Inventive Step in Japan:

1. General Standard for Inventive Step

a) Statutory basis

Article 29, Paragraph 2, of the Japanese Patent Act includes a provision regarding an inventive step, which states:

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 for such an invention ....

b) Examination Guidelines

(1) Principle Method of Determining whether a Claimed Invention Involves an Inventive Step

According to the Japanese Patent Examination Guidelines, whether a claimed invention involves an inventive step is determined by reasoning whether a person ordinarily skilled in the art (referred to as PHOSITA[83] ) could have easily arrived at a claimed invention based up on cited inventions. This determination can be made by constantly considering what the PHOSITA would do after comprehending the state of the art in the field to which the present invention pertains at the time of filing. Specifically, after finding a claimed invention and one or more cited inventions, one cited invention most suitable for the reasoning is selected. A comparison of the claimed invention with a cited invention is then made, and the similarities and the differences in the matters defining the inventions are clarified. Then, the reasoning for lacking an inventive step for the claimed invention is attempted on the basis of the contents of the selected invention, other cited inventions (including well-known or commonly used art), and general knowledge. When the reasoning can be made as a result of the above method, the claimed invention should be denied for lacking an inventive step. When the reasoning cannot be made, the claimed invention should not be denied for lack of an inventive step.

On a premise that the reasoning can be made from various and extensive aspects, the Japanese Guidelines state four typical examples including: (1) a selection of an optimal material; (2) a workshop modification of design; (3) a mere aggregation of features on the basis of cited inventions; (4) whether the contents of cited inventions disclose a cause or a motivation. The third and fourth examples, which are important for examining a combination invention, will be addressed specifically in section (2) (b)

(2) Who is the PHOSITA? Is hindsight allowed?

(a) Who is the PHOSITA?

PHOSITA is defined as “a hypothetical person:

(i) who has the common general knowledge as of the filing in the art to which the claimed invention pertains, and has ability to use ordinary technical means for research and development;
(ii) who has ability to exercise ordinary creativity in selecting materials and changing designs; and
(iii) who is able to comprehend as his/her own knowledge all technical matters in the state of the art in the field to which a claimed invention pertains at the time of filing a patent application.”[84]

In addition, the PHOSITA is supposed to be able to comprehend as his/her own knowledge all technical matters in the field of technology relevant to a problem to be solved by an invention. Furthermore, there may be cases where it is more appropriate to think in terms of “a group of person" than a single person.[85]

(b) Is hindsight allowed?

Patent Act Article 29, Paragraph 2 states that “prior to the filing of the patent application, [the] PHOSITA … [can] easily make the invention…” Identifying the cited inventions and the level of the PHOSITA and the reasoning for lacking inventive step, therefore, must be achieved with no suggestion from the contents of the invention or any kind of knowledge obtained by human beings later by an intentional lapse of memory.[86] The current Examination Guidelines do not directly mention hindsight after their 2000 revision. The previous Guidelines specifically mentioned hindsight.

2. Inventive step and Combination Inventions

a) How is a combination invention defined?

Under Japanese patent practice, the term "combination invention" is not widely used. However, the concept of an “invention by combining known elements” could be evaluated under some principles and legal cases described in the next section.

b) Specific Reasoning for Lacking Inventive Step in Combination Inventions

In Japan, there is more than one aspect for an inventive step. The Japanese Guidelines state that the reasoning of lacking an inventive step can be made from various and extensive aspects, while showing some specific examples of the reasoning.

(1) Mere aggregation of features

For example, if matters defining an invention are not linked to each other functionally or operationally and the invention is a mere aggregation of features, the invention is deemed as a mere exercise of the ordinary creativity of the PHOSITA, unless there is another ground for inferring the inventive step. To illustrate this principle, the Japanese Guidelines reference an old decision, which stated that “the remarkable working-effect which the plaintiffs assert is not deemed to be anything but a mere combination of expected effects of each publicly known art. Thus, the effect is not deemed to be a specific remarkable working-effect of the claimed invention.”[87] The distinction between aggregation (or juxtaposition) and combination, in the final analysis, falls into just one aspect of the effects derived from claimed invention.[88] Accordingly, evaluating the effects becomes a crucial step to determine whether an invention by combining known elements has such an inventive step.

(2) Whether the contents of cited inventions disclose a cause or a motivation

The Japanese Guidelines indicate four factors as probable causes or motivations to combine cited inventions. They are (1) close relation of technical fields; (2) close similarity of a problem to be solved; (3) close similarity of function, work or operation; and (4) suggestions shown in the contents of cited inventions. This principle seems to be similar to the TSM test, which is still persuasive in the USPTO and U.S. courts.

The Japanese Guidelines describe (1) close relation of technical fields as “[a]n attempt to apply a technical means in a related technical field in order to solve a problem is a mere exercise of ordinary creativity of PHOSITA. A replaceable or add-able means in a related technical field, for example, can be a strong ground for the reasoning that PHOSITA would have been led to a claimed invention.”[89]

As an explanation of (2) close similarity of a problem to be solved the Guidelines explain “[a] close similarity of a problem to be solved can be a strong ground for the reasoning that PHOSITA would be led to a claimed invention by … combining cited inventions.”[90] In addition, as the relevance to advantageous effects of a claimed invention, “[w]hen a cited invention does not intend a similar problem to be solved to that of a claimed invention, further examination based on the state of the art should be conducted whether a problem to be solved is evident or whether it would have been easily conceived.”[91] Furthermore, to avoid hindsight, “if the applicant … provides sufficient arguments or evidence of a situation where the combination of the technologies of cited inventions 1 and 2 is obstructed (e.g., since it is the common general knowledge that carbon disk brakes have no dust problem unlike metal disk brakes, there would be no reason to conceive a carbon disk brake with grooves for the purpose of removing dust), an inventive step of the claimed invention cannot be denied from the disclosure of the cited documents.”[92] Whereas this is the same as the concept of so-called “teaching away in the United States,” the Guidelines mention that the “PHOSITA cannot easily arrive at the combination of cited inventions if there is ‘teaching away’ it is an appropriate judgment, although, it may be hindsight to assume that PHOSITA can arrive at all variety of combinations of known inventions in the analogous art if there is not ‘teaching away’”[93] is enough worth paying attention to.

The Japanese Guidelines also mention as an explanation of (3) close similarity of function, work or operation, that “If a close similarity in function, work or operation exists between a claimed invention and a cited invention or between cited inventions, there can be a well-founded reasoning that PHOSITA would have been led to the claimed invention by applying and combining the cited inventions.”[94]

Finally, as an explanation of (4) suggestions shown in the contents of cited inventions, that the Guidelines state “[s]uggestions shown in the contents of cited inventions relevant to a claimed invention can be a strong ground for the reasoning that PHOSITA would have been led to the claimed invention.”[95]

(3) The Latest Combination Inventions Cases

One of the latest Japan IP High Court decisions related to combination invention was decided in June 2007.[96] An invention of claim 1,[97] described as Japan Patent No.3399915, is for an “article support using stretch releasing adhesive,” which has two important elements in comparison with the cited inventions: “the base member can be removed from the substrate” and “the support member can be detached from the base member.” The primary cited invention, which is also an article support, was disclosed in a publication of world patent application (WO 92/11333). Its base member can be easily removed from a wall (substrate), however, its support member cannot be detached from the base member. Therefore the difference between the claimed invention and the primary cited invention was “whether or not the support member can be detached from the base member.” The second cited invention, which has been described in the publication of French Patent No.2328429, is an article support involving its support member which can be detached from its base member.

The Court indicated that the PHOSITA usually tries to apply features in one invention to another invention or to combine them, “when case both cited inventions (prior art) belong to a same technical field and are technical means to carry out a same function, even if any distributed publications show no suggestions.”[98] The Court then concluded that the PHOSITA could apply the detachable feature in the second cited invention to the prior cited invention. Although this holding should be evaluated also from a point of view to avoid hindsight, it is difficult to do so. However, the effects of the combination invention might indicate whether the combination is determined to be sufficiently inventive to warrant patent protection in Japan. The decision also discussed the asserted effects by combining the known elements, and then concluded that the invention did not have an inventive step. Specifically, although the applicant asserted that the detachable support member could hide the means for stretching the adhesive tape, and, at the time of removing the base member from the substrate (e.g. wall), the user could access the tape easily by exposing it, the court held that the asserted effects did not meet a remarkable effect because it was[99] foreseeable effect from the combination of the cited inventions. The court also stated that the effect is not derived from the matters defining the claimed invention. [100]

c) Effects of claimed invention

When examining the inventive step of claimed inventions in Japan, it is not clear whether the effects of the claimed invention are a primary factor or a secondary factor in accordance with the U.S. cases. However it is a clear that effects are a significant factor.

(1) How can an effect of a claimed invention be considered?

The Japanese Guidelines state that “an advantageous effect compared to cited inventions means an effect which is advantageous in comparison with an effect of a cited invention, among the effects derived from the matters defining a claimed invention (i.e., among the characteristic effects).”[101] “If an advantageous effect compared to cited inventions can clearly be identified from descriptions in the specification and the drawings, it is taken into consideration as a fact to support to affirmatively infer its inventive step.”[102] Therefore, it may be to an applicant's advantage to describe an advantageous effect of a claimed invention over the relevant prior art because such advantageous effect, if any, is at least taken into consideration as a fact to support affirmatively inferring the existence of an inventive step.

However, if an advantageous effect derived from a claimed invention is only of limited value, the effect may not support the inventive step. The Japanese Guidelines say that [r]easoning is attempted by confirming and taking into consideration an advantageous effect, if any, of a claimed invention compared to cited inventions. It is noted that regardless of advantageous effects, inventive step may be properly denied by the uncontestable reasoning that PHOSITA could have easily arrived at a claimed invention.[103]
Subsequently, as an example of this principle, the Japanese Guidelines refer to two old decisions, which stated that “[e]ven though the laminated material manufactured by the claimed invention has slightly superior property compared to the conventional material in strength and other factors, the result was achieved through selecting polypropylene resin in place of polyethylene resin according to a selection that PHOSITA would have easily conceived.
Thus, it does not affect the determination with regard to the inventive step,[104] and [a]dapting a silicon carbide as the material in the semiconductor region on the light-irradiated side of the semiconductor layers in the photoelectric conversion semiconductor device would have been easy from the viewpoint of minimizing light absorption in the said region. Thus, the finding that adopting a silicon carbide would have been easy is not affected even though the semiconductor region has the effect of preventing i-type property deterioration in the second semiconductor region.[105]
Although it seems to be quite difficult to find a real “uncontestable reasoning” that PHOSITA could have easily arrived at a claimed invention, the threshold may not be sufficiently high to avoid hindsight from the point of these two decisions.

(2)Remarkable Effects

However, even if uncontestable reasoning that PHOSITA could have easily arrived at a claimed invention is established, when the advantageous effect compared to the cited invention is so remarkable that it cannot be foreseen by the PHOSITA from the state of the art, there may be cases where the inventive step is not denied.[106] Specifically, if a claimed invention has a remarkable effect, which involves a concept formed by combining two notions, which are an advantageous effect and an unforeseeable result,[107] the inventive step should be positively inferred, even though the reasoning seems to be possible that PHOSITA could have easily arrived at a claimed invention by combining plural cited inventions.[108] The notion of “unforeseeable results” may be similar to that of “unexpected results” in U.S. case law and the Thai Examination Guidelines, otherwise the concept of “unexpected results” may primarily include “remarkable effects” rather than mere “unforeseeable results.” The “remarkable effect” is materially important to positively infer the inventive step, not only in the case of an invention in a technical field in which an effect of a product is difficult to predict from its structure, but also in the case of an invention whose effects seem to be proven by reasonable empirical laws based on experimentation. In addition, the combination of known elements could often yield an unforeseeable result, even if the combination seemed to be easy for the PHOSITA.

As the example of remarkable effects, the Japanese Guidelines refer to two decisions[109] which stated:

It is possible to be allowed that producing motilin derivative like the claimed invention on the basis of the cited invention could be easily conceived by PHOSITA. However, even though the motilin of the claimed invention has an effect of the same quality as the motilin of the cited invention, it is appropriate to understand that the invention could be granted a patent as involving an inventive step if the motilin of the invention has an extremely excellent effect and if the effect is so remarkable that it cannot be foreseen by PHOSITA from the state of the art at the time of filing and;
The effect of the claimed invention is not derived until combining each of the constituent features, and is remarkable. Thus, the constituent features cannot have been easily conceived, although each of the constituent features are disclosed in each of the cited documents.

(3) How should “foreseeability” of effects of invention be estimated?

The Japanese Guidelines refer to foreseeability as follows; even though a reasoning seems to be possible that PHOSITA could have easily arrived at a claimed invention because of the close similarity between the matters defining a cited invention and the ones defining a claimed invention or because of a combination of plural cited inventions, the inventive step should be positively inferred if a claimed invention has an advantageous effect, qualitatively different or qualitatively the same but quantitatively prominent in comparison with those of cited inventions, and if the advantageous effect cannot be foreseen by PHOSITA from the state of the art.[110] Because the Japan Patent Act Article 29, Paragraph 2 states that “prior to the filing of the patent application, PHOSITA[can] … easily make the invention…,” this provision expressly forbids the use of hindsight in evaluating inventive step, requiring that determinations of ease be conducted prior to the filing. “The state of the art” is also necessarily determined based on known knowledge “prior to the filing.”

The Tokyo High Court In Re KIRIN Brewery Company Ltd., however, stated that “even though the constitution per se of the claimed invention 1 was easily arrived as mentioned above, … in order to justify that patent is granted for the invention as a ground in its effect, actual effects of the invention must be remarkably different in comparison with the foreseeable ones from the constitution of the invention.”[111] It is not clear why the court indicated the foreseeable effects from the constitution of the invention as the object of a comparison with respect to the remarkable effects of the invention.[112] In addition, the chief judge stated later in a publication that when the constitution per se of the claimed invention was easily arrived at, the effects caused by the constitution, virtually in the case of all, is only obvious results, easily presumable effects or exceedingly easy findable effects.[113]

According to the judge’s opinion, there is virtually no case “when the advantageous effect compared to the cited invention is so remarkable that it cannot be foreseen by PHOSITA from the state of the art” referred to in the Japanese Guidelines. We can still surely understand this controversial opinion from the point of view as a patent examiner or an IP court judge, because such examiners or judges must have faced many cases like this where someone asserted that the effects of a claimed invention can meet the requirement of unforeseeable results from the cited inventions only due to disclosing no reference regarding the exact effects, even though the constituents seem to be easily made. In the long run, the Kirin case shows importance of improving predictability under the Japanese Guidelines, and avoiding hindsight.

(4) The relation between “elements of a claimed invention” and “unforeseeable results”

Some patent applications show surprisingly unforeseeable results for the claimed invention. It may sound natural to grant a patent for such inventions under the Japanese Guidelines, whereas the relation between the effects and the claimed invention may be doubted. Although considering unforeseeable results, i.e. remarkable effects, are a material factor to determine whether a combination invention has an inventive step, the matter of the relationship is an extremely difficult matter. The Japanese Guidelines do not adequately mention the issues. In fact, the courts from 3M[114] and KIRIN[115] held that some of the asserted effects are not effects derived from the matters defining the claimed inventions. On the other hand, the court in Alumina[116] stated that proving any objective causation was not required to obtain a patent, while finding that the causation belongs to the academic world. Furthermore, it is also a fact that many patents have been granted by finding a reasonable relation between the claimed invention and its results though some experimental methods. One example is Japan Patent No. 2868671. This invention is related to a drug called Combivir, which will be also discussed in the section on Thailand.

d) Commercial Success as Secondary Considerations

The Japanese Guidelines state in a section on notes to determine whether a claimed invention involves an inventive step that “a commercial success or other similar facts can be taken into consideration in order to support to affirmatively infer an inventive step, insofar as the examiner finds that the fact is established by the features of a claimed invention, not by any other factors such as sales promotion technique and advertisement through an applicant's legitimate assertion or substantiation.”[117] As an example, the Japanese Guidelines refer to a decision, which stated that “[i]t should be said that the idea of using said remaining gas of oil factory that consists of composition like the claimed invention is absolutely different from the cited invention, and PHOSITA cannot easily arrive at that. Since the claimed invention apparently provides the economic effects that are provision of materials in extremely low cost and effective use of wastes by using remaining exhaust gas of oil factory, and the effect could be evaluated remarkable, the claimed invention is not allowed to be what PHOSITA could have easily made on the basis of the cited invention.”[118] Most of the decisions referring to a commercial success, however, have not accepted this allegation,[119] so it can be surely said that a commercial success may be considered, but it is usually not persuasive during the examination.

3. Proposal for reasonable examination of combination invention

We have already learned, from some U.S. cases such as KSR that requiring strictly explicit causes or motivations to combine cited inventions (known elements) does not always lead to reasonable results, even while not requiring that an invention be the product of a “flash of genius”. Under this situation, considering the effects derived from a claimed invention must become the most material way to determine suitably whether the combination invention has an inventive step. That is to say, at least remarkable effects should be should given great weight in Japan, regardless of whether the so-called secondary considerations become of primary importance when considering the obviousness of a combination like in the United States. Specifically, if a claimed invention has a remarkable effect, which is a combination of an advantageous effect and an unforeseeable result, the inventive step should be positively affirmed, unless there is a completely uncontestable ground for contradicting the inventive step. Regardless of this proposal, the “advantageous effect” should be clearly defined in the Examination Guidelines since it is obscure from the current description in the Japanese Guidelines. Defining may be difficult, however in addition, advantageous effects tend to be arbitrarily judged in each case because the inherent concept of “advantageous” itself is substantially subjective.

Therefore, the “unforeseeable results” in the remarkable effects should be emphasized rather than the “advantageous effect” at the time of determining the inventive step of combination inventions, regardless of whether the so-called secondary considerations become of primary importance when considering the obviousness of a combination invention. Whether the invention has unforeseeable results must be judged only from the state of cited inventions (known elements) in order to avoid hindsight analysis. This principle must have become familiar to the U.S. examiner after KSR, which stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”[120]

V. Korea

A. Inventive Step in KOREA

1. General Standard for Inventive Step

a) Statutory basis Article 29, Paragraph 2, of the Korean Patent Act includes a provision regarding an inventive step[121] as follows: Notwithstanding paragraph 1,[122] where an invention referred to in each subparagraph of paragraph 1 could have been easily conceived before the filing of a patent application by a person with ordinary skill in the art to which the invention pertains, the patent for such an invention may not be granted.

b) Examination Guidelines

(1) Specific method for determining inventive step

The examination guidelines state two main factors as the specific method for determining inventive step, (1) motivation to reach claimed invention, and (2) technical difference/advantageous effects.

(a)
  • Motivation to reach claimed invention
  • This factor relates to whether the cited reference includes any motivation to reach the claimed invention from the PHOSITA perspective. There are strong grounds for obviousness where: (1) the cited invention includes any suggestion for the claimed invention, (2) the cited invention and the claimed invention have objective or function/operation in common, and (3) there is a relevancy in view of technical fields.

    (b) Technical difference/Advantageous effects

    This factor relates to whether the claimed invention provides any advantageous effects over the cited invention in addition to the technical difference between the claimed invention and the cited invention. Where the effects accruing from the claimed invention is advantageous over those of the cited invention, such effects can be positively considered. Further, consideration of the advantageous effects is particularly suitable for determining an inventive step of the invention in the chemical field in which predictability of effects is low.

    (2) Who is PHOSITA? Is hindsight allowed?

    (a) Who is PHOSITA?

    The examination guidelines states that PHOSITA is an imaginary person at the time of the filing who:
    (i) has ordinary skill in the art;
    (ii) can freely use ordinary means and capability for research and development;
    (iii) can obtain everything lying in the technical level at the time of the filing and make it his own knowledge;
    (iv) can make skill related to the objective of the invention his own knowledge; and
    (v) comprehends skill that experts in the art have.

    (b) Is hindsight allowed?

    Hindsight is not allowed under Korean patent practice. In the meantime, where the inventive step is determined as to combination inventions based on several prior art references, there is a test for avoiding hindsight under Korean patent practice. It is likely that this test can be compared with TSM test under U.S. patent practice. A person challenging a patent or examiner can try to combine two or more prior art references to reach the claimed invention. However, such an attempt is possible only when it could have been easily made by the PHOSITA at the time of filing the claimed invention.

    2. Inventive step and Combination Inventions

    a) How is a combination invention defined?

    Under Korean patent practice, the specific description "combination invention" is not widely used. However, the concept of the "combination invention" could be determined through case law.

    In a 1999 Korean Patent Court case, the Court stated:

    In the present registered utility model, the publicly-known prior arts as disclosed in the cited references are not merely aggregated, but are cooperatively combined by making changes to its configuration and structure so that they can operate in harmony with the entire constitution[123] ……

    In a separate case decided in 2003 by the Supreme Court, the Court held:

    Claim 1 of the present registered utility model is a simple aggregation of (i) the basic structure of Cited Reference 5 publicly known prior to its filing, (ii) the molding technique at the vacuum state due to a vacuum chamber as disclosed in Cited References 1, 7 and 8, respectively, and (iii) mold-fastening system by the clamping block as disclosed in Cited Reference 3.
    Therefore, it is considered that there is neither special difficulty in combining the elements nor significant functional effects, and thus, the present invention could have been very easily conceived from the cited references by a person having ordinary skill in the art.[124]

    In view of the foregoing, it is likely that the patentable "combination invention" can be defined as an invention where the elements constituting the invention are cooperatively combined so as to involve a technical difficulty in its constitution or significant functional effects over prior art. On the contrary where the elements of an invention collected from the prior art such invention is often referred to as a “simple aggregation” in Korea.

    The concepts such as the "combination invention" and "simple aggregation" under Korean patent practice are viewed as being very similar to those under European patent practice.

    b) How is a prima facie case of obviousness established?

    (1) What is required in order to establish a prima facie case of obviousness based on the combination of prior art elements?

    (a) Motivation to reach the claimed invention

    In Korea, it is considered the cited invention provides motivation to the claimed invention where: (1) the cited invention includes any suggestion for the claimed invention, (2) the cited invention and the claimed invention have an objective in common, (3) the cited invention and the claimed invention have a function or operation in common, and (4) there is a relevancy in view of the technical fields between them. These factors can provide strong grounds for obviousness. Thus, Korean patent practice has used a test comparable to the TSM test under U.S. patent practice in order to establish a prima facie case of obviousness. The test is a question of to whether try to combine the prior art references could have been easy to the PHOSITA at the time of filing. In this regard, the Korean Patent Court[125] has held as follows:

    In order to say that the claimed invention could have been easily conceived by the combination of the cited references, there should be any suggestion in Cited References 1, 3, 4 and 5 that their combination can reach the claimed invention. However, neither of the cited references includes such a suggestion or description. Thus, it cannot be said that it was easy to combine Cited References 1, 3, 4 and 5.

    (b) Problem/Solution approach

    Under Korean patent practice, the problem/solution approach as stated in the European examination guidelines does not exist in evaluating the inventive step of a combination invention. However, Korea also values the factors such as (1) the cited invention and the claimed invention have an objective in common, and (2) there is a relevancy in view of the technical fields between them. In particular, as discussed in section “a above, where the claimed invention meets either one of the above factors, it is considered that the cited invention describes a motivation to reach the claimed invention, which can be a strong ground for denying the inventive step of the claimed invention.

    (c) Example of an obvious combination

    There is one Korean Supreme Court case[126] where the Court found:

    Where the claimed invention was made by collecting and combining the existing techniques in the public domain and improving the combination, the inventive step of the invention cannot be recognized unless there is any particular difficulty in combining them or there is any novel synergistic effects beyond those expected from the prior art, and a new technical method is added or it is considered that the invention could not have been easily conceived by a PHOSITA from the prior art.

    Further, the Korean Examination Guidelines introduce a case in which the invention was directed to a home use filter including a filtering part with a predetermined structure. Two prior art references were cited to challenge the patent. Cited Invention 1 described a home use filter where only the filtering part structure was different from that of the invention. Further, Cited Invention 2 describes an automobile use filter including a filtering with the same structure as that of the invention. Given the above, the Guidelines note:

    The filters as described in Cited Inventions 1 and 2 have the same function or operation in view of filtering, and it cannot be said that these are in different technical fields in view of the objective generally required in a filter. Thus, using the filter as described in Cited Invention 2 instead of the filter as described in Cited Invention 1 could have been easily conceived by a PHOSITA.

    (2) Regarding advantageous effects and/or unexpected results

    (a) Definitions of advantageous effects and/or unexpected results

    According to the Korean Examination Guidelines, there are two kinds of effects within advantageous effects. One is when the effects have different characteristics from those of the cited invention. The other is when the effects have the same characteristics with those of the cited invention while having significantly superior effects over those of the cited invention that could not have been expected by a PHOSITA from the technical level at the time of filing the subject application. In view of the foregoing, the unexpected results refer to the latter effects above, which is one type of advantageous effects.

    (b) Roles of advantageous effects and/or unexpected results

    Advantageous effects play an important role under Korean patent practice in determining whether the claimed invention involves an inventive step because they can negate a prima facie case of obviousness. As explained in section "1.b).1" above, the Korean Examination Guidelines state that the advantageous effects accruing from the claimed invention over those of the cited invention can be positively considered in favor of the inventive step. It also states that the advantageous effects become more important in the chemical field because the predictability of effects is relatively low in this field.

    Further, the Korean Supreme Court has found the advantageous effects to be important factors in a patent litigation case involving the inventive step issue. In one case[127] where the claimed invention was directed to dye compositions as well as a chemical combination invention, the Supreme Court found as follows:

    When it comes to the dye compositions in which two or more chemical compounds are mixed in a predetermined ratio, the inventive step should be determined based on the functional effects of the compositions per se. Even if each element constituting the compositions falls within the public domain, the inventive step should be recognized if such a mixture brought about the advantageous functional effects that could not have been expected before.

    In another Supreme Court case[128] where the claimed invention was directed to a method of manufacturing a ceramic filter as well as a mechanical combination invention, the Supreme Court found as follows:

    Where the claimed invention was made by collecting and combining the existing techniques in the public domain and improving the combination, the inventive step of the invention cannot be recognized unless there is any particular difficulty in combining them or there is any novel synergistic effects beyond those expected from the prior art, and a new technical method is added or it is considered that the invention could not have been easily conceived by a PHOSITA from the prior art.

    c) Secondary Considerations and how they Affect the Inventive Step

    Like in the U.S., Korea also takes secondary considerations into account in evaluating the inventive step. Such secondary considerations can include commercial success, long-felt but unmet need, or the like. However, as far as the commercial success is concerned, an applicant should prove a nexus between the technical features of the claimed invention and the commercial success.

    There is one Korean Patent Court case[129] where commercial success had a significant impact on the evaluation of the inventive step. In this case, the commercial success was overwhelming so that the Patent Court found:

    The prior art cited inventions have failed to be commercialized or, even if they were commercialized, their products have been eliminated from the market. That is, they have not made commercial success. In contrast, it is recognized that the kimchi refrigerators according to the claimed invention have made commercial success due to the significant effects accruing from the claimed invention so that they became necessities used in each home in this country.

    There is another Korean Patent Court case[130] where long-felt but unsolved need was considered in evaluating the inventive step. In this case, the Korean Patent Court found as follows:

    Considering that the present invention had not emerged over eight years from the publication of the cited invention to the filing date of the present invention, even if a stapler was a well-known fastening tool at the time of filing, it is not likely that the process of combining an umbrella cloth with a holder by the holder structure and stapler pin as the present invention could have been easily conceived from the cited invention by a person having ordinary skill in the art.

    On the other hand, under Korean patent practice, the existence of foreign counterpart patents cannot be grounds for supporting the patentability of the Korean patent/patent application. In this regard, the Korean Patent Court[131] found as follows:

    The fact that it has been registered for a patent in U.S. that has different legal systems and practices related to a patent can be merely a reference material in evaluating the patentability of the present patent, and cannot be a ground on which the same conclusion should be rendered.

    3. Proposals

    a) Is hindsight a necessary factor in assessing inventive step in Korea

    As discussed in section "1. b) 2" above, the Korean Examination Guidelines points out the danger of hindsight. Further, it also states that, where the inventive step is determined as to combination inventions based on several prior art references, there is a test for avoiding hindsight. That is, it states that an attempt to combine the prior art references is possible only when such a combination could have been easily made by PHOSITA at the time of filing the claimed invention.

    For the most part, an invention is a combination of elements in the public domain insofar as the invention is not a pioneer invention. In particular, this applies more broadly to the mechanical combination invention. In such a case, if elements in prior arts are liberally combined based on the knowledge obtained from the specification of the invention merely on the ground that the elements are found in the prior art references, many patents would not survive.

    The TSM test under U.S. patent practice has been used as a way of avoiding such hindsight. The same is true in Korea that has a similar test. However, this test has faced a transition period after KSR. The U.S. Supreme Court found in KSR case that the TSM test has been strictly applied and that combination of the prior art references could be evaluated in view of the common sense of a person having ordinary skill in the art. Since KSR, a defense by the TSM test against hindsight is viewed as being weakened. This change is expected to have a great impact on Korean patent practice as well because Korea had a similar test to the TSM test.

    Likewise in the U.S., it is expected to be difficult for a patent applicant/patentee to defend his patent application/patent from the combination of several prior art references. Therefore, now is the time when a patent applicant/patentee should review the existent defense strategies and figure out new strategies.

    b) What factors would be particularly helpful to avoid hindsight?

    (1) Descriptions in cited references to teach away from combination of the cited references

    If the prior art references include any descriptions to teach away from the combination of those references, this is likely to be an effective means for blocking such a combination. For example, in view of the description of either one of the prior art references, if a combination of the prior art references does not operate properly or such a combination is contradictory to any objective of either one of the prior art references, such descriptions can be used as a ground for supporting “teach-away”.

    The TSM test sets the grounds for combining the prior art references as teaching, suggestion and motivation and finds one of them in the prior art references, whereas the teach-away test is intended to find any grounds on which the prior art references cannot be combined. That is, their approaches are based on different perspectives. In fact, as pointed out in KSR, the TSM test had room for criticism because it was too strictly applied in evaluating combinations. However, the approach for a teach-away is completely different from the TSM test in perspective, and thus, is likely to be free from similar criticism and also comply with the common sense of a person having ordinary skill in the art as mentioned in the KSR case.

    (2) Role of other factors

    Although not a way for directly avoiding combining the prior art references by hindsight, significant or synergistic functional effects have played an important role in evaluating an inventive step under Korean patent practice. In particular, they have been even more important in the chemical field in which the predictability of the effects is low. They have been positively considered in other technical fields as well. The significant effects are relatively clear in a chemical invention, whereas it is sometimes unclear whether the claimed invention provides any significant effects over the prior art in a mechanical field. This often raises a controversial issue. Thus, as much as it is difficult to evaluate the significant effects, the inventive step can depend on how the patent applicant/patentee manipulates the significant effects accruing from the claimed invention.

    In the meantime, it would be desirable to positively use secondary considerations such as commercial success. However, as for the commercial success, a nexus between the commercial success and the technical features of the claimed invention should be proven, and the commercial success is likely to be considered when it is overwhelming. Thus, it would be desirable to use the commercial success as a means for reinforcing the primary considerations.

    VI. Thailand

    A. Inventive Step in Thailand

    Thailand does not have a long history of legal development in the field of patent law. Despite the fact that an idea for the establishment of a patent system emerged in 1913,[132] there was no legal protection for inventions in the country until 1979. In 1964, the Supreme Court held that patent rights were not enforceable under Thai law.[133] Therefore, in discussing the rule of patent law in Thailand, particularly the non-obviousness test, it is inevitable to also discuss some foreign rules, especially, those rules in England and in the United States. Moreover, Thailand uses the term “inventive step,” rather than non-obviousness. However, the inventive step is equivalent to non-obviousness under Thai law.

    1. General Standard for Inventive Step:

    a) Thai Patent Act B.E. 2535 (1992)

    The first Patent Act was enacted in 1979. It was later amended to comply with (TRIPS) in 1992. In the Patent Act, there are two sections related to the inventive step. First, Section 5, which concerns the condition for granting a patent, provides that “[a] patent may be granted only for an invention in respect of which the following conditions are satisfied: (1) the invention is new; (2) it involves an inventive step; and (3) it is capable of industrial application.” Second, Section 7, which further explains the inventive step, provides that “[a]n invention shall be taken to involve an inventive step if it is not obvious to the person ordinarily skilled in the art.”

    b) The Patent Examination Guideline of the Thai Department of Intellectual Property (TDIP)

    Compared to other countries’ patent examination guidelines; for example, USPTO, EPO, JPO, or KIPO, the examination guidelines in the TDIP are not as clear or well-organized. Even though the TDIP guidelines do not provide detailed explanations, nor cite many specific examples, they provide the key concepts for patent examination. Moreover, many parts of the guidelines recognize the discretion of patent examiners. In regard to the inventive step analysis, it could be concluded that the TDIP guidelines are a combination of the European Patent Office (EPO) problem-solution approach and the U.S. secondary considerations.

    To assess inventive step, the examiners normally apply “the problem-solution approach.” There are three main steps. First, the examiners must determine the “closest prior art.” In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention. In addition, the closest prior art must be assessed from the view of a skilled person, on the day before the filing. Second, the examiners must establish the “objective technical problem” to be solved. However, the term “objective technical problem” should be broadly interpreted. It does not necessary imply that the solution is a technical improvement over the prior art. Therefore, the problem could be simply to seek an alternative to a known device or process providing the similar effects. Finally, the examiners must consider whether the claimed invention would have been obvious to the skilled person.

    However, the problem-solution approach in the TDIP is not as strict as in the EPO. Unlike the EPO, the discretion of the examiner plays a large role in Thai inventive step analysis. The examiners must also consider many factors that are almost the same as the U.S. secondary considerations. Although the claimed invention may be obvious according to the problem-solution approach, the invention may be granted a patent if the secondary evidence have much weigh.

    The TDIP guidelines recognize the usefulness of many factors; for example, the commercial success, long-felt but unsolved need, failure of others, urgent requirement, and copying. The most important factor that the examiners must consider is whether the claimed invention has the unexpected results.

    Comparing the TDIP problem-solution approach to decisions from the Intellectual Property Court, the four-point test that the court has applied is almost the same as the problem-solution approach; however, it does not determine the “closest prior art.” The Intellectual Property Court[134] directly applied the analysis of Judge Oliver L.J. from Windsurfing International Inc. v Tabur Marine Great Britain Ltd. [1985] RPC 59, which is the four point-test for the inventive step, as follows:

    (1) the court identifies the inventive concept embodied in the patent in suit;

    (2) the court will assume the mantle of the normally skilled, but unimaginative addressee in the art at the relevant date and impute to him what was at that date common general knowledge in the art in question;

    (3) the court identifies what, if any, differences exist between matter cited as known or used and the alleged invention; and

    (4) the court decides whether, viewed without any knowledge of the invention, those differences constitute steps which would have been obvious to the skilled man or whether they required any degree of invention.

    Regarding combination inventions, the TDIP guidelines do not provide special examination guidelines for combination inventions, other than to require that the invention be considered “as a whole.” Therefore, even if the separate features of the combination are known, the whole invention may not be obvious. Instead, obviousness is based on a determination by the examiner that the content of the prior art makes it likely that the person skilled in the art faced with the problem would combine the features. The guidelines also state that it is obvious to combine two documents, one of which contains a clear and unmistakable reference to the other.

    c) Who is the person having ordinary skill in the art? Is hindsight allowed?,/p>

    According to a decision from the Thai Supreme Court, the “person skilled in the art,” is a skillful person available in Thailand.[135] This standard of the “person skilled in the art” applies regardless of the country of origin of the inventor. Therefore, the standard of the inventive step test could be lower than that of developed countries. Moreover, in the TDIP guidelines, the patent examiners separated in nine categories of invention are the assumption of the person skilled in the art in those specific areas. However, the “person skilled in the art” is still a factual determination that would be made on a case, by, case basis. If the technical problem is concerned with a computer implementation of the business, actuarial or accountancy system, the skilled person is someone skilled in the data processing, and not a businessman, actuary or accountant.

    Both the Intellectual Property Court and the TDIP guidelines do not allow the use of hindsight in determining if there was an inventive step. The Intellectual Property Court has condemned the misuse of hindsight for patents that are new and inventive combination of known features.[136] The TDIP guidelines also provide that in considering the inventive step, the examiners must apply the knowledge prior to the date of filing.

    2. Inventive Step and Combination Inventions:

    a) How is a combination invention defined?

    According to the Intellectual Property Court decision and the TDIP guideline, a combination invention is an invention that uses two or more patented inventions to make a distinct and useful product, including a union of features in an invention that works together cooperatively to perform a useful function.[137] The combination invention is the opposite of an aggregation or juxtaposition. The Intellectual Property Court explained that when a claimed invention consists of a “combination of features,” it is not correct to argue that the separate features of the combination taken by themselves are known and that of course the whole subject matter claimed is obvious. For example, if invention is the combination of a can-opener tool, made from a single stamping which comprises a bottle opener at one end, a can opener on the other end, and a lid opener in the middle. The Intellectual Property Court explained the need to separate the combination and juxtaposition or aggregation. Where the claim is merely “aggregation or juxtaposition of features” and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. However, the court decided that this can-opener was a combination invention.[138]

    b) How is a prima facie case of obviousness established?

    To determine if a combination invention is prima facie obvious, the Thai courts generally follow the four-point test outlined in the Windsurfing International case. However, the identification of the closest piece of prior art is not followed in all cases. For example, in the Techniport case,[139] the main issue was whether the cold forging process for manufacturing mechanical a connection for concrete reinforcing rods was obvious. The defendant argued that the patent lacked the inventive step because the “cold forging” had been such a well-known process for many years. After applying the four -point test, the court concluded that while the common general knowledge at the time of filing the application was cold forging, however, applying cold forging to the connection of concrete reinforcing rods required more imagination than the knowledge of the person having ordinary skill in the art. Therefore, this invention passed the inventive step test.

    There are very few cases in Thailand that apply the inventive step test to chemical inventions; therefore it is difficult to determine how the inventive step test would be applied. However, one available example is the Viagra patent. Viagra(r) is a trade name of the medical use for the treatment of male erectile dysfunction (MED) of Pfizer. Although the active ingredient in Viagra was developed from the known compound and the formula of Viagra is almost the same as the prior art, Viagra was granted a patent because the modification of the known compound resulted in an unexpected result.[140] The inventions of chemical substances are considered inventive where a new property has been found; the new use based on that property produces a positive result; and that property cannot be expected from the structure, composition, or its chemical property of the associated substance in an obvious way. Therefore, the unexpected result, which is treated like the primary consideration, is a significant property of the drugs that could prevent the prima facie of obviousness, particularly those drugs that have almost the same formula as the prior art.

    (1) What is required in order to establish the prima facie case of obviousness based on the combination of prior art elements?

    It is permissible to combine the disclosure of one or more documents, part of documents or other pieces of prior art with the closest prior art, if such combination is reasonable. According to the TDIP guidelines, the fact that more than one disclosure must be combined with the closest prior art to arrive at a combination of features may be the sign of the presence of an inventive step.

    To consider the prima facie case of obviousness on the combination invention, the Intellectual Property Court also applies the four-point test; the court particularly focuses on whether the combination invention requires more imagination than the general common knowledge.[141] For example, considering the combination of can-opener tool,[142] the Intellectual Property Court applied this four-point test and concluded that although all features were known, the combination of the features required more imagination than the general knowledge of the person having ordinary skilled in the art.

    In regard to the TDIP, the guidelines provide the “problem-solution” approach, which is also applied to the judgment of a combination invention. If the combination invention could not pass the problem-solution approach, the prima facie of obviousness will be established. In addition, the TDIP guideline also provides some specific examples for prima facie obviousness. If the combination invention could be characterized as one of the following, it would be deemed lack of inventive step: (1) the exercise of ordinary mechanical skill; (2) the mere perfection of workmanship; (3) that which is logically deducible from the teachings of the prior art; (4) the mere enlargement or change in size, degree, or form; (5) the mere substitution of one material for another; (6) the absence of a new or different result in a combination of old elements; (7) the application of an old process or machine to an analogous subject, with no change in the manner of application, and no unexpected result; (8) the merely carrying out a prior art process in a continuous manner; (9) the mere carrying forward of an old idea; and (10) the substitution of a known equivalent for one of the elements of an old structure.

    Therefore, the four-point test and the problem-solution approach need to be considered in order to establish the prima facie of obviousness based on a combination invention. Moreover, although the TDIP guide does not provide the exact “teaching, suggestion, and motivation” test, it provides some examples that may be related to the TSM test.

    (2) An example of an obvious combination:

    Combination therapies are a significant tool in the fight against HIV. It is well known that if a single medicine is used against an infectious agent, the agent may become resistant to that medicine. One way of reducing this likelihood is to use more than one drug at once since it is less probable that the agent will develop resistance to both attacks simultaneously. [143] Antiretroviral treatment is a good example. [144]

    There was a critical case on a chemical invention a few years ago. This case is related to both patent and social issues. The disputed invention was Combivir(r), which is the tradename of the HIV drugs of Glaxo-Smith-Kline (GSK). GSK filed an application to the TDIP for Combivir(r), which is the combination of zidovuldine (AZT) and lamivuldine (3TC). Both compounds had been individually patented by GSK. The application stated that using the two drugs together has a surprising effect in that the emergence of resistance to medicine is reduced. However, the Health and Development Foundation, a NGO in Bangkok, brought objections to the granting of a patent on Combivir(r) on the ground that the combination did not constitute an inventive step. The objection was dismissed because of lack of evidence. The HIV patients and NGOs still pressured GSK by protesting in front of the GSK Bangkok office, Thailand, at the same time as the Indian HIV patients and NGO protested in front of the GSK office in Bangalore, India.[145] Finally, in 2006, GSK withdrew the “Combid” patent application in TDIP.

    This case may be not a good example in considering the obviousness in combination inventions. It does not show the rule in the TDIP, nor the Thai court. However, it reflects that in developing countries; for example, Thailand and India, the social pressure has a great influence in filing the application. The question of whether Combivir could be granted a patent if GSK had not withdrawn the application will be discussed later.

    (3) Advantageous effects and unexpected results

    Neither the TDIP guidelines nor the decision of the court provides for the consideration of advantageous effects. However, the inventive step is always evaluated by considering the “unexpected” results of the claimed invention.[146] The unexpected results would be viewed as surprisingly better or superior by a person skilled in the art. That which is surprising to one having ordinary skill in the art is neither predictable nor obvious. Therefore, if there is evidence of an unexpected or surprising result, the prima facie of obviousness cannot be formed.

    The Viagra patent, previously mentioned, is a good example of unexpected results that would be weighed in the TDIP prosecution. The existence of an inventive step in this chemical compound was judged by taking into account the structural similarity between the claimed invention and the prior art compounds. Although the structure of the compound was almost similar, Viagra provided unexpected results and it was granted a patent.

    Comparing the principle of unexpected results to the combination invention, if the combination invention provides an unexpected result, the prima facie of obviousness cannot be formed and the invention would pass the inventive step requirement. Imagine two drugs, one that makes people 5cm taller and one that makes them 5cm thinner. If a patient took the two together and got 5cm taller and 5cm thinner, that is just what might have been expected and the combination of the two compounds cannot be said to be an inventive step. However, if a patient took the two together and became completely resistant to malaria instead, this would be an unexpected effect and the combination of these two compounds could be a new and separate invention.[147]

    The next question is if GSK had not withdrawn the Combivir application, whether the Combivir would have been granted a patent under the TDIP. The Combivir, as mentioned above, is a combination of two well-known compounds. These two prior compounds and the Combivir are in the same field, the treatment for HIV. In addition, one may argue that the combination of compounds in Combivir does not provide a synergy. However, the TDIP guidelines do not concern synergy. Therefore, if GSK could prove the unexpected results of the Combivir(r) which is the resistance to the medicine is reduced; the TDIP could grant a patent to Combivir.

    c) Secondary considerations and how they affect the analysis of inventive step

    As previously mentioned in Part 1(b), of the TDIP guidelines, the secondary evidence that relates to the advantages of the applicant’s invention plays a crucial role in considering the inventive step. It is significant to note that secondary considerations are by no means secondary in importance, only secondary in sequence after analysis of traditional inventive step considerations. Moreover, even though consideration of secondary considerations is not required by judicial precedent, commercial success, a typical secondary consideration, is considered in some cases. For example, in the combination can-opener tool[148] and the cold forging process for manufacturing mechanical connection for concrete reinforcing rods,[149] the court directly expressed the commercial success of the invention as one of the reasons supporting the inventive step. The court further explained that if the applicant's combination invention is achieved with commercial success, it raises the assumption that if the invention was obvious then someone else would have previously brought it to market. Additionally, the commercial success must arise from the benefits of the claimed invention and not from factors such as advertising and marketing.

    In addition, the court, in the combination can-opener tool case, also considered the fact that competitors had sought to copy the combination invention, which would be considered in the determination of the inventive step. Even better is the evidence that competitors tried to design around the invention without success. However, the court left the door open to consider other factors which are relevant in determining the inventive step.

    3. Proposal

    One of the most significant proposals for the consideration of the combination invention is avoiding hindsight. Hindsight bias happens when people who know the answer vastly overestimate its predictability or obviousness, compared to the estimates of subjects who must guess without advance knowledge; therefore, hindsight bias would hinder the combination invention.

    a) Is hindsight a necessary factor in assessing inventive step?

    Both the TDIP and the Intellectual Property Court state against the misuse of hindsight for patents which are new and inventive combinations of known features. In the TDIP guidelines, the examiners must apply the general knowledge prior to the filing date of the application. However, since the large majority of the inventive step determinations start from the point of a known outcome, the combination invention itself, and then the attempt to reconstruct the state of the art back to the time the invention was made, the effect on the qualitative judgment of obviousness becomes inherently distorted by hindsight reasoning. In regard to the Intellectual Property Court, applying the four-point test may be a solution to avoid hindsight, particularly, in considering whether the combination invention requires more imagination than the common general knowledge. This test in the court could help solve the problem of hindsight bias in patent examination. However, for the most effective result, the TDIP guidelines should also establish the test which could affirm avoiding hindsight bias during patent prosecution.

    b) The role of secondary consideration indicia of non-obviousness in avoiding hindsight

    Both the TDIP and the Intellectual Property Court emphasize the secondary considerations in determining the inventive step of combination inventions. This is a good point of the patent system in Thailand. The secondary considerations would be helpful to promote inventions that would not be so complicated. Moreover, these factors can promote against the hindsight bias by considering some questions; for example, if it were obvious, why someone would not have previously developed the invention to solve the need. The secondary considerations may work as “plus factors,” tipping the balance of obviousness one way or the other in a particular case. However, it is important not to go too far with these factors.[150]

    c) The role of the TDIP and the court

    As Thailand does not have many years of development in the patent field, it is suitable to mix the good and effective rules from the developed countries. However, the TDIP and the court should make clear what rules they follows; otherwise, the uncertainty of the system would hinder invention. Moreover, the TDIP guidelines should be well-organized and provide more details and examples.

    VII. Conclusion

    The non-obviousness/inventive step requirements in the United States, EPO, Japan, Korea, and Thailand establish the minimum level of innovation over the prior art that is required to receive a patent. Both the “problem-solution approach” followed by the EPO and Thailand and the modified TSM approach taken by the United States, Japan, and Korea seek to determine what would have been obvious to the person having ordinary skill in the art. A common problem in making this determination is the influence of hindsight on the analysis. Left unchecked, hindsight can undermine the patentability of many important innovations, most notably combination inventions. Thus, objective evidence of non-obviousness is important in preserving the patentability of combination inventions by countering the effects of hindsight.

    In the United States, nonobviousness is determined by assessing whether the invention “as a whole,” would have been obvious to the person having ordinary skill in the art at the time it was made. While hindsight is forbidden from non-obviousness analysis, its influence is difficult to exclude. In KSR, the Supreme Court confirmed that hindsight has no role in obviousness analysis; however, the Court also indicated that special consideration should not be given to certain types of inventions, namely combination inventions, to overcome the influence of hindsight. Under the “flexible approach” to non-obviousness analysis advocated by the court, a motivation to combine elements in the claimed manner need not be explicit in the prior art to render a combination obvious. A danger with this flexible approach to determining non-obviousness is that it is difficult to exclude hindsight from the analysis. Secondary considerations, can counter the influence of hindsight by acting as objective evidence of what would have been obvious to the person of ordinary skill in the art.

    The “problem-solution approach” employed by the EPO to determine if an invention possesses an inventive step asks whether the claimed invention would have been obvious to a person of ordinary skill in the art based on the closest prior art and the objective technical problem solved by the invention. This approach necessarily involves the use of hindsight, since the closest prior art is determined based on knowledge of the claimed invention. Furthermore, inventions combining elements from closely related arts whose elements do not act together to solve a common technical problem are likely to be considered mere aggregations and thus not patentable, since the solution to each “mini-problem” would be obvious. Thus, secondary indications of non-obviousness are particularly relevant in the problem-solution approach because they indicate whether the person skilled in the art would, as opposed to could, have made the claimed modifications to the closest prior art in order to solve the objective technical problem. This counters the effect of hindsight in framing the objective problem solved by the invention.

    According to the Japanese Patent Examination Guidelines, whether a claimed invention involves an inventive step is determined by whether the reasoning that a person ordinarily skilled in the art could have easily arrived at a claimed invention based on cited inventions can be made, and then the reasoning can be made from various and extensive aspects. However, if a claimed invention has a remarkable effect, which involves a concept formed by combining two notions which are an advantageous effect and an unforeseeable result, the inventive step should be positively inferred, even though a reasoning seems to be possible that a person ordinarily skilled in the art could have easily arrived at a claimed invention by combining multiple cited inventions. While so-called secondary consideration in the United States, such as commercial success, may not be persuasive in determining whether the invention has inventive step in Japan, the remarkable effects must be the most important factor to counter the effect of hindsight in reasoning an ease of combination invention by various and extensive aspects.

    Korean patent practice as to determining inventiveness has been made with a focus on the difference in technical constitutions between the claimed invention and the cited references as well as any advantageous effects accruing from the claimed invention that could not have been expected from the cited references. In particular, as for the combination invention comprising a number of constitutional elements, a test similar to the U.S. TSM test has been applied to avoid hindsight by looking to whether there is any motivation to combine those elements in the cited references that describe each element. From this perspective, the KSR case that objected to a rigid application of the TSM test is viewed as having a great impact on Korean practice as well.

    As Thailand does not have long development in the patent field, it is suitable to mix the good and effective rules from developed countries. However, Both the TDIP and the Intellectual Property Court emphasize the secondary considerations in determining the inventive step of the combination invention. This is a good point of the patent system in Thailand. The secondary considerations would be helpful to promote invention.

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    Footnotes

    • [1]  Agreement on Trade-Related Aspects of Intellectual Property Rights, Art. 27(1), Apr. 15, 1994, 33 I.L.M. 1197.
    • [2] See T 181/82 O.J. EPO 1984, 401. A common criticism of the problem-solution approach is that it necessarily requires the use of hindsight in determining the objective problem that the invention is directed at solving.
    • [3] Constitution, Article I, §8, cl. 8.
    • [4] 52 U.S. 248, 267 (1850).
    • [5] 5 See Chisum on Patents, 5.02. See also Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 83, 90 (1941).
    • [6] See S. Rep. No. 1979, 82nd Cong., 2d Sess.6 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess. 7 (1952).
    • [7] See Giles S. Rich, Why and How Section 103 Came to Be., 14 Fed. Circuit B.J. 181, 189-190.
    • [8] 35 U.S.C. §103(a).
    • [9] 35 U.S.C. §103(a).
    • [10] 383 U.S. 1 (1966).
    • [11] Graham, 383 U.S. at 18.
    • [12] See id.
    • [13] See In re Rouffet, 149 F.3d 1350, 1356-57 (Fed. Cir. 1998).
    • [14] See id.
    • [15] See id.
    • [16] See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Circ. 1992). “If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent.”
    • [17] In re Rouffet, 149 F.3d 1350 (1998).
    • [18] See Panduit corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Circ. 1987).
    • [19] See Environmental Designs v. Union Oil Co., 713 F.2d 693 (1983).
    • [20] KSR Intern. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007).
    • [21] See Medtronic v. Cardiac Pacemakers, Inc., 721 F.2d 1563 (Fed. Cir. 1983).
    • [22] See United States v. Adams, 383 U.S. 39 (1966); Anderson’s-Black Rock, Inc v. Pavement Salvage Co., 396 U.S. 57, 90 (1969); Sakirda v. Ag. Pro, Inc., 425 U.S. 273 (1976).
    • [23] 127 S.Ct. 1727 (2007)
    • [24] Id. at 1739.
    • [25] See Barna De, Chipping Away at the Infringer’s “Obvious” Advantage in Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., CASRIP Newsletter, (Summer 2008) for post-KSR analysis.
    • [26] See In re Rouffet, 149 F.3d 1350 (1998).
    • [27] See Manual of Patent Examination Procedure, (8th ed.), August 2001, §706.02(j). “To establish a prima facie case of obviousness, three basic criteria must be met. First there must be some suggestion or motivation, either from the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine the reference teachings. Second, there must be a reasonable expectation of success. Finally the prior art references (or references when combined) must teach all the claim limitations.”
    • [28] See KSR, 127 S.Ct. at 1741-1743.
    • [29] Id.
    • [30] Id.
    • [31] See Omegaflex, Inc. v. Parker Hannifin corp. 2007 WL 1733228 (unpublished opinion). Motivation to combine prior art references could be found in “the knowledge of a skilled artisan in approaching the nature of the problem.” See also Dippin dots v. Mosey 476 F.3d 1337 (2007). Motivation to combine prior art elements may be found in the “knowledge of one skilled in the art or in the nature of the problem to be solved.”
    • [32] 496 F.3d 1374 (Fed. Circ. 2007).
    • [33] Id. at 1380.
    • [34] Id.
    • [35] Id. at 1382.
    • [36] Graham, 383 U.S. at 17-18.
    • [37] See, e.g. Eli Lily and Co. v. Zenith Pharmaceuticals, Inc. 471 F.3d 1369 (2006); In re Sullivan, 498 F.3d 1345 (2007).
    • [38] See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Circ. 1983); In re Sullivan, 498 F.3d 1345 (Fed. Circ. 2007).
    • [39] See Cable Electric Products, Inc. V. Glenmark, Inc. 770 F.2d 1015 (Fed. Circ. 1985).
    • [40] See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Circ. 1983).
    • [41] See Leapfrog Enterprises Inc. v. Fisher-Price, Inc. 485 F.3d 1157 (2007).
    • [42] Dystar Textilfarben GMBH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1371 (2006).
    • [43] G. Knesh, Assessing Inventive Step in Examination and Opposition Proceedings in the EPO, epi Information 95, 95 (March 1994).
    • [44] European Patent Convention art. 56, Oct. 5, 1973.
    • [45] European Patent Office, Guidelines for Examination in the European Patent Office, pt. C, ch. IV, [hereinafter Guidelines] §§11.4.
    • [46] Guidelines, §§11.3; T 141/87 (Bosch) Sept. 29, 1988.
    • [47] Guidelines, §§11.7.
    • [48] Martin J. Adelman et al., Cases and Materials on Patent Law 378 (2nd ed. 2003).
    • [49] Id.
    • [50] Guidelines, §§11.7.
    • [51] Guidelines, §§11.7.1.
    • [52] Knesh at 96.
    • [53] Guidelines, §§11.7.
    • [54] Guidelines, §§11.7.2.
    • [55] Guidelines, §§11.7.
    • [56] Guidelines, §§11.7.3.
    • [57] See Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., [1985] R.P.C. 59 CA (Civ Div).
    • [58] Knesh at 96.
    • [59] T 299/85 (Etching Process)1987.
    • [60] Adelman at 379.
    • [61] Guidelines, §§11.5.
    • [62] Guidelines, §§11.5.
    • [63] Guidelines, §§11.8.
    • [64] Id.
    • [65] KSR, 127 S.Ct. at 1739.
    • [66] See Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., [1985] R.P.C. 59 CA (Civ Div). The court rejected an argument by the patentee claiming that the person skilled in the art would have dismissed the reference chosen as the closest prior art, because it would have been seen as “a not very practical toy.”
    • [67] Guidelines, §§11.5.
    • [68] Guidelines, §§11.5.
    • [69] Guidelines, §§11.9.3.
    • [70] Knesh at 97.
    • [71] Guidelines, §§11.9.
    • [72] Guidelines, §§11.9.4.
    • [73] T 106/84 (Michaelsen/Packing Machine) 1985.
    • [74] G.S.A. Szabo, The Problem and Solution Approach to the Inventive Step 293-303, 299 E.I.P.R. 1986; T55/86 (Bendix/Braking Apparatus) 1988.
    • [75] T 456/90 (ETA/Watch) 1993.
    • [76] T 12/82 (Sciaky/Surface Hardening) 1984.
    • [77] T55/86 (Bendix/Braking Apparatus) 1988.
    • [78] Id.
    • [79] Of the 18 decisions of the Technical Board of Appeals that I examined for this paper, only T 106/84 (Michaelsen/Packing Machine) found evidence of secondary considerations persuasive.
    • [80] Knesh at 98.
    • [81] Id.
    • [82] Guidelines, §§11.4.
    • [83] PHOSITA is an abbreviation of “Person Having Ordinary Skill InThe Art.” It is “Togyosha” in Japanese, and ”a person with ordinary skill in the art” or “a person ordinarily skilled in the art” are more general as the English term for the Japanese, but their meanings all are equivalent.
    • [84] Japanese Guidelines, Part II, Chapter 2, Section 2.2 (2).
    • [85] Id.
    • [86] Japan Patent Office, Shinposei-tou ni kansuru kakkoku unyou-tou ni kansuru tyosa-kenkyu hokoku-sho -Heisei 18 nendo tokkyotyo itaku sangyo zaisanken seidokakkoku hikaku tyosa kenkyu tou hokokusho,39 (2007)
    • [87] Japanese Guidelines, Part II, Chapter 2, Section 2.5(3).
    • [88] Many patent specialists have referred to the distinction, and then “combination invention” seems to have “synergistic effects” while “aggregation (or juxtaposition) invention” seems to have only mere “sum effect.” See e.g. Nakayama Nobuhiro, Kougyoshoyuken ho (Jo) Tokkyo ho, Horitsugaku kouza sosho (Apr. 2000), 139, 140. or Kimura Koutaro, the Patent Law in the United State, Shoji Homu (Jun. 11, 2001), 116.
    • [89] Japanese Guidelines, Part II, Chapter 2, Section 2.5(2).
    • [90] Id.
    • [91] Id. See also the following section c.
    • [92] Id.
    • [93] Japan Patent Office, Shinposei-tou ni kansuru kakkoku unyou-tou ni kansuru tyosa-kenkyu hokoku-sho -Heisei 18 nendo tokkyotyo itaku sangyo zaisanken seidokakkoku hikaku tyosa kenkyu tou hokokusho,40 (2007)
    • [94] Japanese Guidelines, Part II, Chapter 2, Section 2.5(2).
    • [95] Id.
    • [96] In Re 3M, IP High Ct., Jun. 27, 2007 (Heisei 17 (Gyo-ke) 10743).
    • [97] An article support adapted for adhering to a substrate, comprising:a base member;a detachable support member being attached said base member; a stretch release adhesive tape adhered to the base member; andmeans for stretching said stretch release adhesive tape, whereinwhen said base member is adhered to the substrate by said stretch release adhesive tape, said base member is capable of being removed from the substrate by gripping the gripping means and stretching the stretch release adhesive tape at an angle no greater than about 35 degrees from the surface of the substrate, said gripping means resisting disassociation from said stretch release adhesive tape during the removal.
    • [98] In Re 3M, IP High Ct., Jun. 27, 2007 at 15, 16 (Heisei 17 (Gyo-ke) 10743) .
    • [99] Although I am not sure whether or not the judge considered when the effect could be foreseen, from only words of the decision, the time might be when the judge saw the cited invention. On the contrary, the Examination Guideline states that “Whether or not a claimed invention involves an inventive step is determined whether the reasoning that PHOSITA could have easily arrived at a claimed invention based on cited inventions can be made by constantly considering what PHOSITA would do after precisely comprehending the state of the art in the field to which the present invention pertains at the time of the filing.” See Japanese Guidelines, Part II, Chapter 2, Section 2.4.
    • [100] In Re 3M, IP High Ct., Jun. 27, 2007 at 18, 19 (Heisei 17 (Gyo-ke) 10743) .
    • [101] Japanese Guidelines, Part II, Chapter 2, Section 2.5(3).The reference uses the four words, advantageous, effect, comparison and cited invention, to define “an advantageous effect compared to cited inventions.” That is to say, the definition of “advantageous effect” is still rather obscure, while it is not explained in the other part of Japanese Guidelines.
    • [102] Id. at 2.5 (3).
    • [103] Id.
    • [104] Id.
    • [105] Id.
    • [106] Id.
    • [107] JPO usually uses "foreseeable" rather than "predictable" for the Japanese word “yosoku” which is mentioned in the Japanese Guidelines.
    • [108] Japanese Guidelines, Part II, Chapter 2, Section 2.5(3).
    • [109] Id.
    • [110] Id.
    • [111] In Re KIRIN Brewery Company Ltd., IP High Ct., Nov. 1, 2001 at 16 (Heisei 12 (Gyo-ke) 238) .
    • [112] See Takashima Kiichi, Shinposei handan niokeru ronriduke, Tokkyo kenkyu, No. 40(Sep. 2005), 58-66, at 63.
    • [113] YamashitaKazuaki, Section 5 Shinketsu (kettei) torikeshi jiyu, Editorial Supervisor: Takeda Minoru, Tokkyo shinketsu torikeshi sosho no jitsumu to hori, Hatsumei kyokai, 160,161.
    • [114] 3M, at 18, 19.
    • [115] KIRIN, at 16 .
    • [116] 456 Hanrei Jiho 56. (Osaka D. Ct., Feb. 14, 1965).
    • [117] Japanese Guidelines, Part II, Chapter 2, Section 2.8(6).
    • [118] Id.
    • [119] Under analyzing search results by using “Commercial Success (Shogyoteki Seiko)” in the decision search engine offered by Japanese Court. (find at http://www.courts.go.jp/search/jhsp0010?action_id=first&hanreiSrchKbn=07)
    • [120] KSR, 127 S.Ct. at 1739.
    • [121] The Korean Patent Act use the term "inventive step," which can be compared with the term "non-obviousness" under 35 U.S.C. (U.S. Patent Act). Under Korean patent practice, the inventive step appears to be viewed as a standard that is a little higher than the non-obviousness standard because the inventive step often requires any advantageous effects over prior art in addition to technical differences between claimed invention and the prior art.
    • [122] Article 29, Paragraph 1, of the Korean Patent Act includes a provision regarding novelty.
    • [123] The Korean Patent Court Case No. 99heo741, decided on June 10, 1999.
    • [124] The Supreme Court Case No. 2001hu2269, decided on January 10, 2003.
    • [125] The Korean Patent Court Case No. 2002heo8424, decided on September 4, 2003.
    • [126] The Korean Supreme Court Case No. 96hu221, decided on May 30, 1997.
    • [127] The Korean Supreme Court Case No. 90hu1567, decided on April 15, 1994.
    • [128] The Korean Supreme Court Case No. 96hu221, decided on May 30, 1997.
    • [129] The Korean Patent Court Case No. 2002heo8424, decided on September 4, 2003.
    • [130] The Korean Patent Court Case No. 98heo8397, decided on April 23, 1999.
    • [131] The Korean Patent Court Case No. 2005heo4850, decided on May 12, 2006.
    • [132] Phaungrach, Yanyong, Patent. Law and Practice, Bangkok, 1990,p.7 (in Thai).
    • [133] Supreme Court Decision No.837/2507.
    • [134] Intellectual Property Court No.1358/1999.
    • [135] Supreme Court Decision No.4131/1993.
    • [136] Intellectual Property Court No. 2537/1999.
    • [137] Phaungrach, Yanyong, Thai Bar Association on patent, 2006 (in Thai).
    • [138] Intellectual Property Court, supra note 136.
    • [139] Intellectual Property Court, supra note 134.
    • [140] Phaungrach, Yanyong, supra note 137.
    • [141] See also Intellectual Property Court No.106/2006
    • [142] Intellectual Property Court, supra note 136.
    • [143] Available at www.who.int/medicinedocs/index.
    • [144] Antiretroviral treatment for HIV infection consists of drugs which work against HIV infection itself by slowing down the replication of HIV in the body, available at http://www.avert.org/introtrt.htm.
    • [145] GSK Withdraws Combivir Patent Application from India and Thailand, available at http://www.twnside.org.sg/title2/intellectual_property.
    • [146] Phaungrach, Yanyong, supra note 137.
    • [147] WHO, supra note 143.
    • [148] Intellectual Property Court, supra note 136.
    • [149] Intellectual Property Court, supra note 134.
    • [150] Robert P. Merges, Peter S. Menell, Mark A. Lemley, Intellectual Property in the New Technological Age, 249 (Aspen Law & Bus 4th ed.).

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