經通國際智慧產權事務所

On April 25, 2006, the Taiwan Intellectual Property Office (TIPO) accepted the invalidation filed against the patent (Issue No.: 190377) with the title of “IC Test Handler for High-Frequency IC Testing”. Since the subsequent appeal filed by the patentee was dismissed by the Committee of Appeal of the Ministry of Economic Affairs, the patentee filed an administrative lawsuit with the Taipei High Administrative Court. In the decision dated September 27, 2007, the Court reasoned that the component of “IC to be tested / tested IC buffer bearing” disclosed in the disputed patent was neither indicated nor implied in the cited prior art and rejected both of the decisions made by the TIPO and the Committee of Appeal.

The Court pointed out that according to the Patent Examination Standards published by the defendant and the legal fiction set forth as “Where the contents of an invention claimed in a patent application are identical to the contents described in the specification or drawings submitted along with an application for invention or utility model patent that is filed prior to but laid-open or published after the filing of the present patent application, no invention patent may be granted to the invention” in Article 20-1 of Patent Act 2001, the determination of novelty should be based on the comparison with individual prior art (instead of combination of two or more prior arts) and depend on if the technology was concretely indicated or implied (to be easily accomplished by a person having ordinarily knowledge in the art based on prior art ) in the prior art.

Based on the aforementioned articles of Patent Act and Patent Examination Standards, the Court noted that both the defendant and the appellant agreed with the fact that the component of “IC to be tested / tested IC buffer bearing” disclosed in the disputed patent was not concretely indicated in the prior art claimed by the defendant. Nevertheless, in the defendant’s decision of invalidating the disputed patent, the “automatic transmission device” of the cited prior art was regarded as the implication of the “IC to be tested / tested IC buffer bearing” disclosed in the disputed patent. The Court examined the operations of the said “automatic transmission device” and the “IC to be tested / tested IC buffer bearing” and explained that because the IC to be tested was directly distributed by a robot arm from the IC supply device for testing in the “automatic transmission device” but the “IC to be tested / tested IC buffer bearing” serves the function as an intermediate station between the IC supply device and the IC testing device, the “automatic transmission device” of the cited prior art cannot be established as the implication of the “IC to be tested / tested IC buffer bearing” component of the disputed patent.

The Court further noted that the implication of prior art should be limited to the technologies disclosed in the claimed prior art. Therefore, even though the “IC to be tested / tested IC buffer bearing” component was indicated as ordinarily knowledge in the art in the description of the disputed patent, as the said component was not within the scope of the prior art claimed by the defendant, the lack of novelty of the disputed patent could not be claimed accordingly.

At last, the Court provided that due to the disputed patent covered the complete structure and fitting of the IC Test Handler for High-Frequency IC Testing, the inventive nature of the disputed patent should be viewed as a whole. As the prior art claimed by the defendant could not establish the lack of novelty of claim 1 of the disputed patent and claim 2 of the disputed patent was a dependent claim, both claims of the disputed patent possessed novelty.

Based on the reasons listed above, the Court ordered to overturn the TIPO’s and Committee of Appeal’s decisions for invalidating the disputed patent.

By Jenny Yu

International Affairs