經通國際智慧產權事務所

On March 28, 2007, the Taipei High Administrative Court reversed the Taiwan Intellectual Property Office’s (TIPO) and the Committee of Appeal of the Ministry of Economic Affairs’ decisions of accepting the filed opposition against patent application no. 089208905 with the title of “Structure Modification of High Torque Compound Rack Wheel Changeover Wrench”. The Court noted that as the proposed prior art was published after the filing date of the opposed patent, the lack of novelty of the opposed patent could only be claimed based on legal fiction. However, as legal fiction is only applicable when the technology of the proposed prior art is identical to the opposed patent without any difference in shape, structures or fittings, and component 73 of the opposed patent application was not disclosed in the proposed prior art, legal fiction could not be applied.

In the decision, the Court first indicated that according to the Patent Examination Standards published on Nov. 25, 1994, for the same technology, when a granted patent with the filing date earlier and published date later than the filing date of the later filed patent application, the later filed patent application should not be considered to be lack of novelty as the technology was not open to the public by the filing date of the later filed patent application. However, following the sole license nature of a patent right, the technology indicated in the abstract and figures of the granted patent with the earlier filing date will be considered as prior art based on legal fiction and the later filed patent application is deemed to be lack of novelty accordingly. However, the said application of legal fiction is limited to the consideration of novelty and cannot be extended to the consideration of an inventive step. In addition, the Court noted that the examination of the novelty of a patent application is the consideration of that if any differences of technology can be identified in comparison with prior art. If any difference is identified between abstracts, figures and claims of the examined patent application and the prior art, the novelty of the examined patent application is confirmed accordingly.

After comparing the opposed patent application and the proposed prior art, the Court concluded that the component 73 of the opposed patent application was not disclosed in the proposed prior art and the structures of the opposed patent application were not identical to those of the proposed prior art.

Based on the reasons listed above, the Court ordered to overturn the TIPO’s and the Committee of Appeal’s decisions of accepting the filed opposition against the disputed patent.