經通國際智慧產權事務所

On December 13, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the invention application with the title of “Iodine Type Polarization Plates” filed on September 5, 2001 and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. In the said ruling, the Court noted that the ground provided by the examination decision issued by the defendant was insufficient and contradicted the defendant’s testimony in the trial. Thus, the Court deemed the defendant’s decision of rejecting the disputed patent to be questionable.

The defendant’s written decision regarding the disputed patent proposed that claim 1 of the disputed patent lacked inventive step because the U.S. prior art provided at least two embodiments with the dehydration temperatures at 94°C and 75°C. However, based on the Chinese translation (confirmed to be correct by the defendant) of the said prior art, the Court noted that all of the samples included in the said prior art were baked at 94°C and some of the said samples were then baked at 75°C only for comparison. Therefore, the said lack of inventive step proposed by the defendant was inappropriate.

In addition to the said temperatures of drying oven, the conditions provided by the disputed patent also included the temperatures/concentration of the boric acid bath, the washing bath and the drying oven after adhesion. The Court noted that, however, other than the said temperatures of drying oven, the prior art’s disclosure of the other conditions and whether or not the other conditions were ordinary skill in the art were not concretely explained in the said decision issued by the defendant.

Regarding the sub claim 2~5 of the disputed patent, the Court pointed out that the said decision issued by the defendant breached the Patent Examination Standards by merely providing the statement of that “all are ordinary skill in the art and lacked inventive step” without concrete explanation. Furthermore, the Court noted that the said statement categorized sub claim 2~5 of the disputed patent as ordinary skill in the art and thus contradicted defendant’s own trial testimony of that “sub claim 2~5 are only description of the effects without concrete technical characteristics”. Therefore, the Court deemed if sub claims 2~5 were description of the effects, or lacked technical characteristics and inventive step to be questionable.

Based on the reasons above, the Court invalidated the decisions by the TIPO and the Committee of Appeal, and ordered the disputed patent to be reexamined by the defendant.

Organized and translated by Angela Shen

International Affairs