Luo (“patentee”), the owner of Taiwanese patent M567542 (“’542 Patent”), titled "Cover of Mushroom Cultivation Bag," sued the Taiwan Intellectual Property Office (TIPO) after disagreeing with an invalidation decision for fictitious lack of novelty. At the Intellectual Property and Commercial Court (the "IPC Court"), based on a prior art reference that was filed first but published later, the court held that the technical novel features in claims 1 and 7 of the '542 Patent were obtained only from a direct substitution of common knowledge, and were therefore deemed to lack novelty. Luo appealed the IPC Court's decision to the Supreme Administrative Court, asserting the lower court’s error in determination of the law.

  In the appeal, the patentee raised two principal arguments. First, he challenged the IPC Court's conclusion regarding claim 1 of the '542 Patent, arguing that the IPC Court had misapplied the inventive step criterion to the determination of fictitious lack of novelty. Second, he argued that the IPC Court had failed to present any evidence supporting its judgment or interpretation of what constituted "common knowledge" in this case.

  Lack of novelty based on legal fiction is statutory bar under Article 23 of Taiwan's Patent Act. Where an invention claimed in a patent application for invention is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, an invention patent shall not be granted.

  As for the meaning of "identical" in this context, according to the Patent Examination Guidelines, the definition of Novelty applies mutatis mutandis. These principles set out four criteria for determining "identical content": (1) totally identical; (2) the difference only lies in the literal descriptions or in the technical features which can be directly or unambiguously deduced; (3) the difference resides in the generic and specific concepts of the corresponding technical features; and (4) the difference lies only in the technical features which can be directly substituted based on common knowledge.

  Patentee asserted that the lower court’s use of law was wrong. Criterion (4) means that a claimed invention differs from the prior art only in some technical features whereas a person ordinarily skilled in the art can directly switch said technical features with common knowledge. Yet, this wording might somewhat be similar to one of steps in the inventive step benchmark addressing the level of difficulty to accomplish the invention by a person ordinarily skilled in the art based on prior art. The patentee asserted the lower court being using the concept of inventive step to resolve an issue in the fictitious novelty loss.

  The Supreme Administrative Court addressed this question by first distinguishing the difference in fictitious lack of novelty and inventive step.

  Criterion (4) for fictitious lack of novelty assesses only whether the substituted technical feature performs on its own the same function before and after the direct substitution. It does not require any assessment of whether the overall technical means yields as a whole the same function after substitution, as distinctively required in inventive step. In other words, there is no need to consider whether the overall technical means, before and after substitution, is similar or different for fictitious lack of novelty, but only whether the replaced technical feature possesses the same functionality originally.

  Turning to the present case, the difference between the prior art reference and the disputed patent was only an engaging means of a breathable pad attached to the inside of a cover. Use of gluing to engage elements was a common knowledge in the field. Replacing the engaging means with a gluing means as disclosed in the disputed patent was merely a direct substitution that would have been readily made by a person having ordinary skill in the art. Moreover, it was not clear to identify if the use of gluing was to offer another technical solution. Hence, the use of gluing the in the present case was straightforward.

  For the reasons stated above, the lower court’s judgment dismissing the patentee’s claims was made in no errors in law. The judgement was so affirmed.

  In light of this judgment, when a claim's technical feature is challenged as merely a "direct substitution" in a dispute of lack of novelty based on legal fiction, patentees should carefully identify whether that feature's function has changed before and after substitution rather than producing different technical effect to the benefiting the invention as a whole. If the feature's function remains the same, it is advisable to revise the patent claim by adding further technical features to the claim to better distinguish it from the prior art.

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