發明與新型專利之專利要件的適用與研究──以進步性專利要件為中心

A Study on the Patentability for Invention Patent and Utility Patent - Focusing on the Inventive Step of Patentability

專利權是由法律規定所授予的一種排他性權利，由申請人準備具法定格式之專利申請書、專利說明書及申請專利範圍項專利主管機關提出專利申請，由專利審查官依據專利法所規定之專利要件來審定該專利申請案是否具備而可以授以專利。該專利要件其中之進步性要件是專利申請過程中，於整個程序上是否能取得專利核准之最後一道關卡與門檻。『進步性要件』可說是發明專利，甚至是整個專利法中最重要且影響最深遠之專利要件。我國專利之申請類型有發明、新型及新式樣三種。該三種專利申請案之審查時，除了審查該案是否為適格之標的、產業利用性（實用性）及新穎性之要件之外，其中發明、新型之審查尚需要審查該專利案之進步性要件。於發明專利之申請請求實審或發明、新型之舉發程序時，以違反『進步性要件』作為核駁理由或舉發理由的比例最高。現行專利法對於發明、新型之進步專利要件規定並不完全相同，使得兩者在要求進步性之論究程度上有所不同，也是立法當時之刻意安排。但目前智慧局於舉發程序時適用之新型專利的進步性要件審查卻未另外加以區分或做不同之規定，而是直接準用發明專利之進步性要件審查，這之中的差異性及適用性顯然有商榷之餘地。

There are three types of patent applications in Taiwan: invention, utility model and design. These three types of patent applications are subject to examination concerning statutory subject matter, industrial applicability, and novelty. For invention and utility model patent applications, whether the subject matter involves inventive-step is also examined. Since failure to meet the inventive-step requirement is the most common reason of rejection for an invention patent application or the invalidation procedure of an invention or a utility model, “inventive-step” has become a very important prerequisite of a patent application, whose effect is far and wide. However, the Patent Law has different requirements for the determination of inventive-step for an invention and a utility model. For example, for an invention application, whether a person having general knowledge in the technical field in which the invention belongs to, can easily achieve the subject matter from the prior-arts, is the basis of determination of inventive-step; for a utility model, whether a person having general knowledge in the technical field in which the utility model belongs to, can obviously and easily achieve the subject matter from the prior-arts, is the basis of determination of inventive-step. Apparently, there is a degree of difference in the inventive-step requirement between whether the subject matter can be “easily achieved” or “obviously and easily achieved.” Even though the difference is deliberately regulated when the Patent Law was introduced, the Patent Authority, namely the Taiwan Intellectual Property Office (TIPO), disregards the difference, and applies the inventive-step requirement of an invention application to a utility model application during invalidation procedures in practice. This practice is rather inappropriate. Moreover, this paper also introduces the inventive-step requirements in Mainland China and the United States, and with the incorporation of the description and analysis of related domestic and international cases or examples, this paper aims to be of assistance to the practitioners.