經通國際智慧產權事務所

On July 18, 2007, the Taipei High Administrative Court upheld the Taiwan Intellectual Property Office’s (TIPO) and the Committee of Appeal of the Ministry of Economic Affairs’ decisions of rejecting the invalidation filed against patent issue no. 94402 with the title of “Modifications of the Structure of Differential”. In the said decision, the Court noted that for sub claims which were dependent on an independent claim, the said sub claims’ content should cover and further illustrate the complete technology description of the said independent claim; and the scope of an independent claim should be the same as its dependent claims. Therefore, since the lack of novelty or inventive step could not be established for the independent claim 1 of the disputed patent, the sub claim 2 (dependent on claim 1) could not be established to be lack of novelty or inventive step.

The Court examined the evidences submitted by the appellant and provided the following statements in the decision.

1. Exhibit 2 was a catalogue disclosing the appearance of an electric cart without showing the structure of the differential within; and as an internal design diagram of Porite Taiwan Co., Ltd., Exhibit 3 could not be proven to have been published or put to public use. Therefore, as the connection between Exhibit 2 and Exhibit 3 could not be established, claim 1 of the disputed patent could not be proven to be lack of novelty.
2. The article of confidentiality was set forth in Exhibit 4, a differential development agreement, and since the design diagrams of Exhibit 5 and Exhibit 16 were governed by the said agreement, Exhibit 5 and Exhibit 16 could not be regarded as public publication. As Exhibit 6~15, Exhibit 17, Exhibit 18 and Exhibit 19 including photocopies/original copies of purchase orders, bills of sales, component manuals and catalogues were either dateless or dated later than the filing date of the disputed patent, and public use of the disputed patent could not be established. Thus, Exhibit 4~21 could not prove the disputed patent to be lack of novelty or inventive step.
3. Exhibit 22~25 are private correspondences which could not be established to be open to the public before the filing date of the disputed patent. For Exhibit 26 (dateless photocopy of catalogue of product number MK35HE), Exhibit 27~28 (photocopies of purchases orders of product number 35HE), Exhibit 40 (photocopies of product certification of product number 35HE), Exhibit 29~31 (certificates of sales/purchases, debit notes, and barcode certificates of product number MK35), Exhibit 32 (sample of product model number MK35HE), Exhibit 33~34 (design diagrams the same as Exhibit 32 by ASI Co.), as product model numbers 35HE, MK35 and MK35HE were different without concrete evidence to prove the fact that the 3 said model numbers represented the same product, and both Exhibit 26 and Exhibit 32 are dateless, the lack of novelty and inventive step of the disputed patent could not be proven based on publication or public use before the disputed patent’s filing date.
4. Structural differences among the disputed patent and Exhibit 35~38 (4 U.S. patens proposed as prior arts by the appellant) existed and the structure of the disputed patent fulfilled the function of easier assembly. Therefore, claim 1 of the disputed patent could not be established to be lack of inventive step.
5. Exhibit 42 included 2 photographs of the product claimed (by the appellant) to be the same as that shown in Exhibit 2. However, as the model number indicated in Exhibit 2 could not be found in the said photographs and Exhibit 42 was only submitted when filing the administrative lawsuit, the Court did not give any consideration to Exhibit 2.

Based on the reasons listed above, the Court concluded that the lack of novelty or inventive step could not be established for the disputed patent, and ordered to uphold the TIPO’s and the Committee of Appeal’s decisions of rejecting the invalidation filed against the disputed patent.

Organized and Translated by Akina Pan

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