Factors Involved in Determining the Motivation to Combine Multiple Citations for Patentability Assessment in Taiwan
Harriet I.J. Chen, Tai E International Patent & Law Office (Taiwan)
In the course of patent prosecution or patent invalidation proceedings, the core question often revolves around whether the combination of multiple citations can establish a lack of inventiveness in an invention or creation. The essential consideration in this context is whether a person of ordinary skill in the art (PHOSITA) would have had a reasonable motivation to combine multiple citations to achieve a claimed invention or patented technology at the time of filing. Within the context of Taiwan’s patent framework, there are factors that contribute to the determination of the motivation to combine the references. These factors are discussed based on the practical guidelines and pivotal judicial interpretations.
In this regard, Article 22, Paragraph 2 of the Taiwan Patent Act stipulates that if an invention can be easily made by a PHOSITA based on prior art references before filing, no invention patent should be granted for such invention on the grounds of lacking an “inventive step.” The motivation behind combining the technical contents of multiple citations often serves as a critical factor in determining the presence of an inventive step in an invention. This approach is commonly employed by patent examiners at the Taiwan Intellectual Property Office and judges at the courts when assessing the presence of an inventive step. Based on the Patent Examination Guidelines, the following four factors are typically taken into account for the assessment:
- Relation of Technical Fields: whether the technical fields of the technical contents of multiple citations are identical or relevant.
- Commonality of Problems to be Solved: whether the technical contents of multiple citations contain a substantially identical problem to be solved.
- Commonality of Operations or Functions: whether the technical contents of multiple citations contain substantially identical operations or functions.
- Teachings or Suggestions for Combination: If the technical contents of a relevant citation have provided a teaching or suggestion explicitly stated or substantially implied combining the technical contents of different citations.
The Patent Examination Guidelines further explain that when evaluating whether a PHOSITA would have had a motivation to combine the technical contents of multiple citations, the focus should be on the relationship and similarity between the technical contents of those citations, rather than their relationship to the claimed invention to prevent hindsight bias, and these four factors should be comprehensively reviewed and considered. In certain cases, the clear presence of a single factor could serve as the basis for establishing motivation for a PHOSITA to combine the technical contents of multiple citations.
However, the mere fact that citations are in the same or related technical fields does not conclusively prove that there is a motivation for combination, and the other three factors shall be further considered. In a landmark judgment by the Supreme Administrative Court (SAC) in 2018 (Case No. 6472), the relationship between these factors was expounded. The SAC emphasized that “Commonality of Operations or Functions” should not solely rely on the common structure’s operations and functions within the disclosures in the citations, but should also encompass the operations and functions of the mechanism’s overall structure. Regarding the factor of “Commonality of Problems to be Solved,” the SAC clarified that mere relevance of the problems addressed by multiple citations is insufficient to establish motivation for their combination; the problems addressed by these citations shall be “substantially the same.”
Another notable SAC judgment in 2019 (Case No. 4633) further emphasized the importance of assessing the relevance or commonality of the technical contents of the citations to ascertain whether a PHOSITA would be motivated to combine them. Here, the assessment of relevance of technical content involves determining whether the technical contents disclosed in multiple prior art references belong to the same or related technical fields, with the relevance differing for citations in dissimilar technical fields. Consequently, determination of whether a PHOSITA would have been motivated to combine multiple citations is based on complex considerations that vary with each individual case, since the assessment should extend to whether the technical contents of multiple citations substantially address the same problems or perform the same functions, while also considering the presence of teachings or suggestions for combination. This approach allows for a comprehensive evaluation of whether a PHOSITA would indeed be motivated to combine the cited references.
In the aforementioned judgments, the scrutiny of the motivation to combine multiple citations centers on the establishment of “Commonality of Problems to be Solved” and “Commonality of Operations or Functions.” Once the “Commonality of Problems to be Solved” and “Commonality of Operations or Functions” of multiple citations are substantiated, the motivation for combining them could be established. However, establishing “Commonality of Problems to be Solved” demands a higher degree of proof, as the SAC mandates that the problems addressed by the citations must be substantially the same. Additionally, the SAC underscores that not only should the operations and functions of the “common structure” in the citations be taken into account but also those of the “overall structure” of the mechanisms. For parties seeking to invalidate a patent or patent examiners, the grounds for challenging the inventive step of a claimed invention based on the absence of “Commonality of Problems to be Solved” and “Commonality of Operations or Functions” are increasingly challenging to establish.
As this article has highlighted, the determination of whether an invention possesses inventiveness involves a multifaceted analysis of complex factors. The relationship between technical fields, problems to be solved, operations or functions, and teachings and suggestions of the citations shapes the ultimate assessment of whether a PHOSITA would have been motivated to achieve a claimed invention by combining prior art references.
 Section 3 “Inventive Step” of Chapter 3, Patent Examination Guidelines published by the Taiwan Intellectual Property Office in 2022, pages 2-3-18~2-3-21.
 The Supreme Administrative Court 2018 Pan Zi No. 647 administrative judgment.
 The Supreme Administrative Court 2019 Shane Zi No. 463 administrative judgment