經通國際智慧產權事務所

On December 13, 2007, the Taipei High Administrative Court overruled the Taiwan Intellectual Property Office’s (TIPO) and the Committee of Appeal of the Ministry of Economic Affairs’ decisions of rejecting the filed opposition against patent application no. 582426 with the title of “Doorframe Roll Forming Machine”. In the said decision, the Court provided that as the defendant’s recognition of the inventive step of the opposed patent was based on the function not indicated in the opposed patent, and the function indicated in the opposed patent was disclosed in prior arts, the said opposition should be reexamined.

The Court reviewed the specification and prior arts included in the opposed patent and the decisions of rejection provided by the defendant, and explained that,

1. The two prior arts (cited in the opposed patent) both indicated the doorframe manufacturing methods of employing three independent sets of roll forming machines to produce the horizontal beams, left vertical beams and right vertical beams.
2. The specification of the opposed patent indicated the function of modifying the cited prior arts by producing the horizontal beam, left vertical beam and right vertical beam through an one-time procedure with a single roll forming machine.
3. The decisions of rejection provided by the defendant indicated the function of the opposed patent to include the effect of increased stability of the assembled doorframe due to the one-piece structure resulted from the manufacturing technology of the opposed patent.

As the aforementioned function proposed by the defendant was not included in the specification of the opposed patent, the Court excluded the function of “increased stability of the assembled doorframe” from the opposed patent.

The Court also pointed out that Exhibit 2 and Exhibit 3 were prior arts which both indicated the method of manufacturing doorframes through “one-time procedure with a single roll forming machine” and the filing date of Exhibit 2 was even earlier then the filing dates of the two prior arts cited in the opposed patent. Thus, as a matter of fact, the function proposed by the opposed patent was disclosed in Exhibit 2 and Exhibit 3 before the filing date of the opposed patent. As for the defendant’s claim of that the opposed patent’s manufacturing procedure have different processing order from that of Exhibit 2 and Exhibit 3, the Court noted that whether or not that such difference in manufacturing procedure order can be easily accomplished by a person having ordinarily knowledge in the art based on prior art required further examination.

Based on the reasons listed above, the Court deemed the defendant’s confirmation of the inventive step of the opposed patent to be incorrect and ordered the aforementioned opposition to be reexamined.

Organized and Translated by Eunice Yang

International Affairs