[Taiwan] Can the Could-Would Approach Solve Patent Litigation's Hindsight Bias Problem? (Part 2)
[ September 02, 2026 ] >Back| Insights from the Supreme Court 2024 Tai-Shang-Zi No. 453 Civil Judgment (Part 2 of 2) In Part 1, we discussed how the prevailing “omission view” in Taiwan patent litigation has allowed courts to bypass a genuine inquiry into whether a person having ordinary skill in the art could have easily made the invention at issue — fostering hindsight bias and contributing to a 72.6% patent invalidation rate. This installment turns to the Supreme Court's proposed remedy, the “Could-Would” approach, and asks whether it goes far enough. The Supreme Court 2024 Tai-Shang-Zi No. 453 Civil Judgment introduced the Could-Would approach in an attempt to bring this long-neglected legal requirement back into focus. "Could" refers to technical feasibility: after considering the prior art, whether a person having ordinary skill in the art had the technical ability to recombine those technical features to arrive at the patent at issue. "Would" refers to the subjective motivation for research and development: even if the combination would theoretically work (so that Could is satisfied), the court must further ask whether, under the temporal and factual circumstances before the filing date, there was any specific "incentive," "factual basis," or "encouragement" in the individual case that would have prompted an ordinary engineer to abandon the conventional design and instead adopt such a technical combination. Based on the above reasoning, the Supreme Court 2024 Tai-Shang-Zi No. 453 Civil Judgment, in a rare instance, reversed and remanded the original judgment on the ground that the lower court had failed to ascertain the technical level of a person having ordinary skill in the art and had failed to assess whether the invention could have been easily made. However, if the Supreme Court's reasons for remand do not directly address the theory underlying the omission view and instead amount to abstract guidance on legal principles, they may be insufficient to shake the deeply rooted adjudicative habits of the lower courts. The omission view holds that when the court examines the factors indicating lack of inventive step and the factors supporting inventive step, it has already completed the Could-Would analysis at the same time. To some extent, this view is not without merit. The factors indicating lack of inventive step and supporting inventive step are indeed related to both the technical feasibility (Could) and the subjective motivation (Would) for combining citations. For example, overcoming technical prejudice in the prior art proves that a person having ordinary skill in the art had no motivation at the time to combine the citations (Would not), whereas a teaching or suggestion in the prior art proves that the person had both the ability and the motivation to combine the citations (Could and Would). If the lower courts merely cite the Supreme Court 2024 Tai-Shang-Zi No. 453 Civil Judgment in their existing review process and add supplementary explanations stating that one part concerns Could and another concerns Would, then the Supreme Court's effort to encourage lower courts to move away from hindsight bias may ultimately come to nothing. To give a concrete example, in the Intellectual Property Court 2015 Min-Zhuan-Shang-Geng-(Yi) No. 2 Judgment, the parties disputed what constituted a "person having ordinary skill in the art." The court stated in open court that the person having ordinary skill in the art should be defined as "an engineer who, after graduating from university, has worked for one to two years in the manufacturing industry involving computer consoles, signal switchers, and computer peripheral equipment." In fact, however, this definition played no concrete role in the overall reasons for the judgment. Its only role was to provide an explanation to the Supreme Court. In the author's view, for the Could-Would approach to truly become a razor in the hands of trial courts, the real-world “limitations on combining mechanical structures or components” must also be incorporated into the Could-Would analysis. The four factors currently used to indicate a lack of inventive step, namely, the relevance of technical fields, the commonality of the problems to be solved, the commonality of functions or effects, and teachings or suggestions do not, in fact, give much consideration to structural differences among citations or the difficulties of combination. If courts can specifically examine the mechanical structures, operating principles, and limitations on combining the citations, and determine that there is no motivation to combine where the mechanisms operate in different ways, the arrangement of parts and the directions of force are markedly different, mechanical structural incompatibilities or new technical problems may arise (Could not), and the inventor would have had to adopt additional measures or substantial modifications to the structures of the citations to solve those problems (Would not), that would already be a significant step forward. The above views are the author's personal views and do not represent the position of the firm. Attorney Yi-Ta Tsai 2026/09/03 For further information regarding Deferred Examination, please feel free to contact us via email (jawhwa@jaw-hwa.com.tw). |