經通國際智慧產權事務所

On December 27, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the invention patent with the title of “Preparations and Process of Single Side Zinc-plating of Pipe Tunnel” filed on March 6, 2000 and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Taipei High Administrative Court. In the said decision, the Court confirmed that both of the sequential amendments of the disputed patent filed by the appellant on February 10, 2006 and April 21, 2006 contained new matters. Thus, the defendant lawfully negated the aforementioned amendments and examined the version with the amendment of the disputed patent filed by the appellant on March 6, 2002.

The Court pointed out that as set forth in the Patent Examination Standards 2.6.1.3, prior to the examination decision, amendments including matters not found in the original description/diagrams or cannot be directly known by the person having ordinary skill in the art based on the original description/diagrams shall not be allowed. For the amendment of the disputed patent filed by the appellant on February 10, 2006 the Court noted that the added description of “soaking with the inclination angle of 25°~45°” was not disclosed by the original description. And after the defendant issued a Notification of Preliminary Rejection of Re-examination, the amendment of the disputed patent filed by the appellant on April 21, 2006 even further included not only the said added description but also newly added description and diagram 5. As a result, the Court agreed with the defendant’s decision of negating the two said submissions of amendments.

The Court also confirmed the lack of inventive step of claim 1~3 of the disputed patent with the reason of that based on the prior art proposed by the defendant, the technology indicated in claim 1~3 of the disputed patent could be easily achieved by a person skilled in the art. Furthermore, because the procedure of acid rinsing provided by claim 4~5 of the disputed patent indicated the temperature/concentration of thickening heating, muriatic acid and sulphuric acid to be at 20°C~80°C, 2%~32%, and 2%~99%, the Court agreed with the defendant’s statement of that the said temperature and concentration were too broad to establish the inventive step.

Based on the reasons above, the Court confirmed the decisions by the TIPO and the Committee of Appeal to be lawful and rejected the administrative lawsuit.

Organized and translated by Tony Chen

International Affairs