經通國際智慧產權事務所

On January 11, 2006, the Taiwan Intellectual Property Office (TIPO) rejected the invalidation filed against utility model issue no. M259728 with the title of “Auxiliary Diaphragm Structure for Vehicular Lamp”. As the subsequent appeal was also rejected by the Committee of Appeal of the Ministry of Economic Affairs, an administrative lawsuit was filed with the Taipei High Administrative Court. The Court provided that because the said decisions by the TIPO and the Committee of Appeal were based on the comparison between prior art and the technical characteristics not included in the claims of the disputed patent, the said decisions contravened the Patent Examination Standards published by the defendant.

In the said decision, the Court indicated that as set forth in Article 106-2 of Patent Act, the scope of a utility model patent shall be determined based on the claim(s) set forth in the specification of the patented utility model; and when interpreting the scope of claims, the description and drawings of the utility model patent may be used as reference. However, the Court noted that the description and drawings of a utility model patent were only allowed to be used as reference when the wordings of the claims of a utility model patent were vague and indefinite, and the description and drawings contained precise/definite disclosure. Based on the Patent Examination Standards published by the defendant, the Court further provided the following statements for the consideration of the scope of patent right,

◆The basic unit(s) for judgment of novelty and inventive step was/were the claim(s) of a patent application.

◆The establishment of the scope of a patent should be based on the wordings.

Based on the listed statements, the Court provided that when judging the novelty of the disputed patent, the defendant should not consider the technical characteristics beyond the claims of the disputed patent.

◆The Court also examined the defendant’s following reasons of rejecting the filed invalidation,

◆The photocopies of bills of sales and product catalogues of the products claimed to be originated from the prior art proposed in the said invalidation was submitted as evidence for the said invalidation. However, the defendant did not accept the said evidence because it was neither dated nor open to the public.

Because of the physical and undulating convergence ring and parabolic-like reflector, the structure of the disputed patent produced even illumination, whereas the structure of the prior art proposed in the said invalidation produced uneven illumination.

Based on the points of Patent Examination Standards and arguments listed above, the Court noted that the defendant’s decision of rejecting the said invalidation was based on the structures of “physical and undulating convergence ring” and “parabolic-like reflector” not included in the claims of the disputed patent. Thus, the Court overruled the decisions by the TIPO and the Committee of Appeal, and ordered the filed invalidation to be re-examined.

Organized and translated by Jenny Yu

International Affairs