Evaluating claim conflicts between patents is a crucial issue in patent applications and validity allegations. Existing patent informatics tools do not relate well to the legal requirements of identifying claim conflicts; innovation theory does not address patent evaluations; and the current legal approach has weaknesses in the repeatability between cases. Therefore, a need emerges to design a scientific method for evaluating conflicts between patent claims. This thesis presents research on the topic of identifying, evaluating, and visualising patent conflicts. ‘Conflict’ is used to have the same meaning as obviousness, which is an essential legal term under the UK Patents Act 1977. Building on existing methods, this research provides a novel method called Criteria-Based Patent Mapping, for assessing claim conflicts between patents. ‘Criteria-Based’ means that this assessment uses evaluation criteria that clarify the inventive step of the patent. The source of these criteria is the well-known Theory of Inventive Problem Solving (TRIZ), which is incorporated into a statistical method of 'Patent Mapping' for evaluating and visualising differences between patent claims. The application of the new method to four case studies shows that there are differences in judging standards between the legal authorities; and also shows an average value of 52% agreement in predicting potential conflicts between patent claims. Based upon these results, the original 39 TRIZ parameters can usually be refined to about 12 criteria. The scope of this method is restricted to patents in mechanical engineering due to the relevancy of TRIZ parameters. This research transforms difficult claim-to-claim evaluations into simpler claim-to-criteria comparisons that lead to more efficient and transparent patent evaluations. Such improvements will be useful for better decision-making in patent strategy.

The reach of the patent system has substantially broadened in recent decades. Subject matter extensions were not introduced by parliaments, but by individual judges considering specific cases, often between private parties. The focus in this thesis is whether these changes create a net economic benefit to society. Because of the lack of data on patents, it is not possible to address this question directly. The thesis therefore focuses on a critical aspect of patents: their inventiveness.¶ The main contribution of this thesis is a detailed empirical assessment of the inventiveness of patents. This assessment breaks new ground by using the actual claims in the patent specification as the basis for a qualitative assessment against the yardstick of whether there is any new contribution to knowledge. This yardstick is used because a key social benefit from private invention is the spillovers from new knowledge. In addition a low inventive threshold encourages monopoly grants for inventions that would have occurred absent patents, and thus increases social costs without any offsetting benefits.¶ A small universe of 72 recently granted Australian business method patents is assessed on this basis. Of these, one possibly contributes new knowledge, and three others possibly contribute new ideas, but without any associated new knowledge. It is hard to find any contribution in the rest of the dataset. The data suggest that the large majority of currently granted patents produce no benefit to society, and do not meet the normal definition of the concept of “invention”.¶ The detailed analysis shows the underlying problems to include identifying previous knowledge, an issue already suggested by the literature, but more extensively documented here. The legal judgement rules developed through case law are shown to be very poor yardsticks for implementation of an important economic policy. The narrow legal doctrines result in, for example, the computerisation of well-known methods being judged both novel and inventive. They also allow obvious combinations of old ideas, and trivial variations on old ideas to be granted patent monopolies. Despite the analogous use doctrine, patents are granted for the application of known methods to new areas for which they are well suited.¶ A number of proposals are put forward for reform of patent policy. The underlying theme is that there should be a good chance, and clear evidence, that the patent system enhances national economic well-being. Specific proposals include writing the objective of patent policy into the statute so that judges have clear guidance in their decision-making, limiting the grant of patents to science and technology based inventions, requiring the patent applicant to demonstrate novelty and inventiveness beyond reasonable doubt, setting the inventiveness standard in the context of a balance between benefits and costs, and introducing a defence of independent invention.¶ As the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) mandates no discrimination under patent law between fields of technology, the results of this investigation may be generalisable to other technology fields. They may also be generalisable to the inventiveness standards in other jurisdictions: of the 72 Australian patents, 32 have already received at least one overseas grant (18 if New Zealand is excluded).

This article is a casuistry review of technical reports of several filesregarding applications of patent of invention, in the technological fields of biotechnology, pharmaceutics, chemistry and engineering, where in general and specific criteria are identified and extracted on the requirements of clearness and inventive step that are evaluated in the technical report for obtaining a patent of invention in Peru.It is important to note that prior to the review of the investigated technical reports, certain definitions are provided for understanding the requirements of the technical report, such as conciseness, clearness, sufficiency, novelty and inventive step. / El presente artículo es una revisión casuística de informes técnicos de diferentes expedientes de solicitudes de patentes de invención en los campos tecnológicos de la biotecnología, farmacia, química e ingeniería, donde se identifican y extraen los criterios generales y específicos sobre los requisitos de claridad y nivel inventivos que se evalúan en el examen técnico para la obtención de una patente de invención en el Perú.Es importante señalar que previo a la revisión de los informes técnicos investigados, se brindan algunas definiciones para la compresión de los requisitos del examen técnico, tales como concisión, claridad, suficiencia, novedad y nivel inventivo.

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專利制度是知識經濟時代最為重要的一種智慧財產權形式，不但對於技術創新居功厥偉，在國際商業活動中也占有極具份量的地位。而在取得專利的三大要件中，以非顯而易知性（即我國進步性）最為棘手，蓋其本身屬於不確定之法律概念，而容有裁量空間。 非顯而易知性發軔於美國判例法，其後由實務主導其發展。在指標性案例KSR判決中，最高法院揭示了非顯而易知性的審查架構，以Graham四要件法則為根柢，並輔以顯可嘗試原則及彈性運用的TSM檢測法，整體而言KSR判決提高了非顯而易知性的適格門檻。在後KSR時代，CAFC在機械工業、醫藥品與生物科技等領域分別依不同程度適用KSR見解。2009年In re Kubin案確認KSR見解可適用於不可預測性較高之基因生技領域，近幾年來顯可嘗試原則也獲得高度重視。 相較而言，我國進步性審查主要依據智慧財產局所制定的專利審查基準，但行政審查常有過於直觀簡略之嫌；法院判決則在「發明所屬領域中具通常技術者之技術水準」與「該領域具通常技術者參酌先前技術所揭露之內容及申請時的通常知識，是否能所能輕易完成系爭申請發明之整體」此兩步驟的論證上較為欠缺，整體而言達成進步性結論之心證揭露程度不足，對於當事人有突襲性裁判之虞。 本研究基於上述觀察所得，對美國與我國關於非顯而易知性概念之認知與實踐進行比對，並分別就審查實務面與產業因應面提出微薄建議，以期借鏡美國法經驗使我國未來實務操作更趨完善。 / Patent system is one of the most important forms of intellectual property rights in the era of knowledge economy, not only indispensable for technological innovation, also of great influnce in the international business activities. Among the three requirements of patentability, “Non-obviousness” (ie, “Inventive Step” in Taiwan) is the most difficult to fulfill, due to the uncertainty of its legal concept and the room for discretion. Non-obviousness was carved out in the U.S. case law and continuously developed by the court rulings. In the benchmark case KSR v. Teleflex, the Supreme Court articulated that the examination framework of non-obviousness is based on Graham four factors, along with other principles like “Obvious to Try” and the TSM test in a more flexible way. In general, KSR lifted the eligibility threshold for non-obviousness. It has been applied in different degrees by the Court of Appeals for the Federal Circuit to various fields such as machinery industry, pharmaceuticals and biotechnology in the post-KSR era. Then it was recognized in 2009 In re Kubin case that the KSR opinion is applicable to the unpredictable field, gene biotechnology, for instance. Besides, the “Obvious to Try” principle has been gaining much attention in recent years. In comparison, both administrative and juducial examinations of inventive step in Taiwan are mainly based on the “Substantive examination guidelines for invention patent” issued by the Intellectual Property Office. However, the administrative review is often reckoned to be too intuitive and rough, and the court decisions are considered to be made with less expression on “the level of the PHOSITA” and “whether a PHOSITA with the reference to prior arts and common knowledge can complete the whole invention without difficulty.” In all, the lack of revealing the reasoning on the inventive step conclusion might expose the parties in danger of surprise judgements. Based on the above observations, this study compared the cognition and practice of non-obviousness both in the United States and in Taiwan, and as a result, presented some primary suggestions in light of the United States’ experience toward both the practice and industries, so that our inventive step examination practice in the future could be improved.