經通國際智慧產權事務所

On May 24, 2007, the Taipei High Administrative Court upheld the dismissal by the Committee of Appeal of the Ministry of Economic Affairs and the rejection by the Taiwan Intellectual Property Office (TIPO) of the opposition against the patent application no. 92200483 with the title of “Heat Dissipating Fins Structure”.

In the submitted reasons for opposition, the opponent/appellant argued that according to Article 98-2 of Patent Act 2001, the said patent application lacked of the inventive step because the covered elements, connections between elements and functions are the same as three prior arts in Taiwan. The Court reasoned that even though the filing dates of the three aforementioned prior arts in Taiwan are earlier than the disputed patent application, the publication dates of the three said prior arts are later than the filing date of the disputed patent application. Therefore, the appellant’s claim of that the disputed patent application lacked of the inventive step was deemed unacceptable by the Court.

On the other hand, the Chinese translations of five prior arts in the United States were also included in the filed reasons for opposition to prove that the disputed patent application breached the “first-to-file” principle provisioned in Articles 27 and 105 of Patent Act 2001. However, the Court explained “first-to-file” principle to be only applicable to the same invention applications within the same country. As the five prior arts were in the United States and the disputed patent application was in Taiwan, the Chinese translations of the five prior arts were ruled out by the Court.

In the filed reasons for the administrative lawsuit, the appellant made an additional claim of that the disputed patent application lacked of novelty because the technology proposed by the disputed patent application had already been disclosed by the five said prior arts in Taiwan and the United States. However, the Court provided that the scope examined by the administrative lawsuit should be limited to the defendant’s decision on the reasons for opposition filed by the opponent/appellant; and refused to consider the said additional claim since it was not included in the submitted reasons for opposition.

Organized and Translated by Jenny Yu

International Affairs