2012 Xing Zhuan Su Zi No. 46
|Decision No.||2012 Xing Zhuan Su Zi No. 46|
|Date||November 29, 2012|
The determination of the inventive step mainly focuses on the technical value of the patent. The invention’s commercial success serves only as a secondary consideration.
A comparison of the patent in suit with prior art should be conducted first, disregarding its commercial success, or the evidence the plaintiff provides regarding secondary considerations of the inventive step. If the result clearly shows that the patent does not involve an inventive step, it is not necessary to examine secondary considerations. As set forth above, the differences between claim 1 to claim 3 of the patent in suit and evidence 2 to 4 could have been easily accomplished by a person having ordinary skills in the art. Accordingly, there is no need to further examine secondary considerations.
“Invention attaining commercial success” serves as one of the secondary considerations of inventive step, which is not the only factor. In addition, apart from its technical features, the commercial success of the patented product may also depend on factors such as marketing skills, advertising, the supply and demand in the market and the overall social economic conditions. Evidence 15 and 16 presented by the plaintiff contain only website addresses and numbers of the search results in a search engine without product lists. Therefore, plaintiff’s alleged commercialization by implementing patent in suit is not supported by evidence.
Even if assuming that the plaintiff actually did commercialize the patent in suit and the invention was on sale, as set forth above, the claimed features in claim 1 to claim 3 of the patent in suit have already been described in evidence 2 to 4, which could have been easily accomplished by a person having ordinary skills in the art based on the prior art.
Therefore, it is unclear whether the alleged commercial success of the patented product is solely resulted from its technical features, or is resulted from other non-technical factors. Accordingly, relevant secondary considerations of inventive step fail to prove that claim 1 to claim 3 of the patent in suit meet the requirements of the inventive step.
Inventive step (non-obviousness), commercial success, secondary considerations of inventive step
|Relevant statutes||Article 22 Paragraph 2 of the Patent Act|
- Release Date:2020-11-13