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Intellectual Property and Commercial Court

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2008-Min-Zhuan-Su-20

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Decision No. 2008-Min-Zhuan-Su-20
Date February 27, 2009
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Notwithstanding the absence of the situation set forth in Article 94, Paragraph 1, no utility model may be granted under the Patent Act if it can easily be accomplished by any person with ordinary skill in the art on the basis of prior art that exists at the time when the application is filed. Such requirement is clearly stated in Article 94, Paragraph 4 of the same Act. The inquiry of whether a utility model can easily be accomplished neither relies necessarily on how much the difference is between the claimed utility model and existing prior art, nor does it require improvement of efficiency as a prerequisite. Nevertheless, the purpose of the patent system is to encourage creativity and to boost the development of industrial technology. Accordingly, we should not grant a utility model on a technology that simply combines known elements so as to avoid blocking others from exploiting such technology, which may benefit the industrial development. Therefore, a utility model will fail to meet the inventive-step requirement for the reason that the prior art already suggests to combine part of them when the following occurs: (1) there is only slight difference between such utility model and the prior art; (2) to create such utility model, fewer prior arts are needed to combine; (3) such combination merely generates known functions and effects; (4) the technical features that the utility model contains and are distinctive from the prior art have been disclosed in the literatures of the same technological field; and that (5) persons of ordinary skill in the art could be aptly inspired to combine those prior arts when facing the technical problems that such utility model purported to solve and referring to technical data that can reasonably be acquired or checked.

Related Provision Article 97, Paragraph 4 of the Patent Act
  • Release Date:2020-11-13
  • Update:2020-12-07
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