經通國際智慧產權事務所

On October 5, 2005, the Taiwan Intellectual Property Office (TIPO) rejected the invalidation filed against patent issue no. 62816 with the title of “The Construction Method of Enabling Skateboard to Provide the Functions of Thermal Insulation, Heat Dissipation, Air Venting and Protection against Rain”. As the subsequent appeal was also rejected by the Committee of Appeal of the Ministry of Economic Affairs, the appellant filed an administrative lawsuit with the Taipei High Administrative Court. The Court noted that according to the Patent Examination Standards 2.2.1, prior art covers all the information available to the public earlier than the filing date. As prior art proposed by the appellant was only known by parties under the non-disclosure obligations, and the utilization of the disputed patent only occurred in a manufacture plant which was a restricted area, the Court deemed such information not to be available to the public and rejected the administrative lawsuit filed by the appellant on May 23, 2007.

The Court examined the following evidences submitted by the appellant:

◆Patent issue no. 74090 with the title of “Structure Modification of Metal Skateboard” published on October 11, 1989

◆U.S. patent no. 4023321 (and the Chinese translation of its abstract) with the title of “Layered Roofing Shingle with Dead-air Space” published on May 17, 1977

◆The Taiwan High Court’s decision (Case No. THC/92UA582, March 15, 2005) of a civil lawsuit covering the disputed patent

◆The photocopy of a construction contract

◆Letter No. ANA930823 issued by the National Association of Architect in Taiwan

The Court compared patent issue no. 74090 and U.S. patent no. 4023321 with the disputed patent and provided that the main characteristic of the disputed patent was the space kept between the upper and lower skateboards for the purposes of thermal insulation, heat dissipation, air venting and protection against rain. However, as no technology similar to the said main characteristic of the disputed patent could be found from the two patents raised by the appellant, the appellant’s claim of that claim 1 of the disputed patent lacked an inventive step was rejected by the Court.

The appellant also claimed that the dependent claim 2 of the disputed patent expanded the scope of claim 1 and breached Volume 1 Chapter 3-1 of Patent Examination Standards because claim 1 of the disputed patent indicates air convection holes as the essential components but the dependent claim 2 indicated that the purpose of thermal insulation can be achieved without the air convection holes. The Court provided that as the disputed patent was granted before the publication date (November 25, 1994) of the said Patent Examination Standards on November 4, 1993, the said Patent Examination Standards are not applicable to the disputed patent. And according to the applicable Article 60-3 of Patent Act 1986, as both claim 1 and claim 2 of the disputed patent indicated the technology can achieve the purpose of thermal insulation with or without air convection holes instead of intentional indication of unnecessary description or intentional omission of necessary description for practicing the method, the conditions for invalidation could not be established as the appellant claimed. Furthermore, as a sub claim, claim 2 covered the scope of technology of claim 1, and the appellant’s claim of that claim 1 of the disputed patent lacked an inventive step was rejected by the Court, therefore, claim 2 of the disputed patent contained of an inventive step.

The Taipei High Administrative Court reasoned that since the Taiwan High Court’s decision (Case No. THC/92UA582, March 15, 2005) of a civil lawsuit covering the formality of claims of the disputed patent could not demonstrate the bases for invalidation set forth in Patent Act 1986 (applicable to the disputed patent), such evidence was not favorable to the appellant’s claim.

The Court also reviewed the photocopy of the construction contract and letter No. ANA930823 issued by the National Association of Architect in Taiwan. However, the Court pointed out that because both of the said evidences were unpublished and private documents without indication of the technology of the disputed patent, claim 1 of the disputed patent could not be proven to lack of an inventive step accordingly.

For the appellant’s request to subpoena a construction contract and the related engineering graphics from the Kaohsiung County Construction Bureau and to inspect Qing-Yu Environmental Protection Company’s plant in Kaohsiung, the court provided that as the Kaohsiung County Construction Bureau was under non-disclosure obligation for the deposited construction contract and Qing-Yu Environmental Protection Company’s plant in Kaohsiung was a private site, such information was not available to the public and therefore cannot be established as prior arts.

Based on the reasons listed above, the Court rejected the administrative lawsuit and affirmed both the TIPO and the Committee’s decision.

By Tony Chen

International Affairs