Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
IS THE TECHNICAL FEATURE COMMON KNOWLEDGE? —How to Rebut the Patent Reexamination Board
Linda Liu & Partners
The Examiner in charge of substantive examinations or the Patent Reexamination Board often denies an application or patent’s inventiveness based on common knowledge. To rebut an affirmation that a technical feature is common knowledge, applicants or patentees can begin with knowledge of the court’s attitude.
“Common knowledge” is generally construed as “well known facts.” As far as patents or patent applications are concerned, common knowledge means facts well known in a specific technological field, or ordinary technical features known to the person skilled in the art prior to the filing date.
To prove a technical feature as common knowledge, it is usually necessary to provide (1) textbooks, tool books, or technical dictionaries or manuals which describe the technical feature; or (2) a sufficient amount of evidence, existing for a certain period of time, relating to a variety of fields and recorded in various forms of media which proves that the technical feature has been widely used. Examples are: patent documents, academic papers and product specifications.
It is reasonable to assume that the substantive examination department or the Patent Reexamination Board would offer evidence meeting the above requirements to prove its conclusion that a technical feature is common knowledge. In practice, however, it is uncommon for the Examiner or the Board to give such evidence. As a result, applicants or patentees find it difficult to accept the conclusion made by the Examiner or Board.
This conclusion may be hard to accept, but it has to be accepted. As administrative bodies, the Patent Office and the Patent Reexamination Board make decisions at their discretion to some degree. The prevailing SIPO’s Guidelines for Examination stipulate two ways to verify that a technical feature is common knowledge—providing evidence and explaining in detail. This stipulation means the applicant will rarely succeed in reversing the administration’s conclusion of identifying a technical feature with common knowledge if he merely argues that no evidence backs up its identification because the administration has taken the way of explaining in detail though evidence fails to be provided. As such, the applicant or patentee has to rebut the Board by proving that the Board’s decision does not explain in detail why the technical feature is common knowledge.
What result will the applicant or patentee get when seeking a legal remedy from the court? The court will usually determine whether there is any proof that the technical feature is common knowledge; and determine whether the Board’s explanation can clearly show that the person skilled in the art is able to directly affirm the technical feature as common knowledge if there is no proof. Sometimes, the court makes its decision by means of expertise. As shown above, evidence capable of proving that the technical feature is common knowledge is not necessarily required by the court in making its judgment, and what is most important is whether the explanation is sufficiently detailed. Admittedly, capable evidence is very helpful for the court to make its decision.
Most judges in the people’s court who handle patent administrative cases do not have technological backgrounds and in effect, are not persons skilled in the art, so they are unsure about whether a technical feature is common knowledge. On the other hand, “the person skilled in the art” is an abstract and virtual concept, for which no specific judgment criteria is available. Therefore, a person, even if regarded as a person skilled in the art, is not necessarily able to decide on whether a technical feature is common knowledge. For the above reasons, to get a favorable result from the court, it would be better for the applicant or patentee to explain in such a way that the judge, though not being a practitioner in the relevant field, can deduce with ease that the technical feature is not common knowledge.
Ample evidence, e.g. documents and textbooks, which proves a technical feature not to be common knowledge, is forceful in rebutting the Board’s affirmation, but such evidence is usually hard to get. Hence, the applicant or patentee has to focus on reasoning, for instance, raising a query that the Board did not explain its decision in enough detail and used cut and dried words, or that it made its decision with the wisdom of hindsight. The following measures are also of some use in the rebuttal: searching in the evidence provided by the Board or the third party for disclosures which are able to give opposite conclusions, submitting to the court other court decisions pertinent to the technical field in question which have regarded the technical feature not to be common knowledge, and gathering technical reports made by the relevant associations.
If the applicant or patentee thinks it is almost impossible to reverse the Board’s decision directly, he can try to explain that (1) the invention overcomes the technological prejudice that the common knowledge cannot be combined with the prior art, (2) great efforts are needed because a technical obstacle arises from the combination of the common knowledge and the prior art in order to solve the technical problem to be solved the invention, (3) the invention makes use of a characteristic or effect of the technical feature—which is common knowledge—unknown to the person skilled in the art, and (4) the invention utilizes common knowledge known in irrelevant fields, that is, the prior art does not teach the use of the common knowledge in the technical field to which the invention belongs. To use the above measures, the applicant or patentee must make sure that the application or patent describes in detail the technical problem solved by the technical feature and the resulting technical effects. The judge is not likely to accept the explanation if the original application document does not describe the technical problems and effects.
Applicants or patentees can select from among the above rebuttal strategies against an affirmation that a technical feature is common knowledge according to specific circumstances. Affirmative or negative, the determination of whether a technical feature is common knowledge is not convincing enough to applicants, patentees, or the public unless the technical feature is evaluated objectively and fairly from the point of view of the person skilled in the art.
