經通國際智慧產權事務所

On May 24, 2005, the Taiwan Intellectual Property Office (TIPO) accepted the invalidation filed against the utility model (Issue No.: 189587) with the title of “Structure Modification of Disk Brake Heat Dissipation” and the subsequent appeal filed by the patentee was dismissed by the Committee of Appeal of the Ministry of Economic Affairs. Not giving up, the patentee filed an administrative lawsuit with the Taipei High Administrative Court. In the decision dated July 26, 2007, the Court reasoned that the submitted evidence of sales invoices of the molds of the RX-4 disk brake could at most prove that before the filing date of the disputed patent, the issuer and the receiver of the submitted sales invoices knew the technology of the disputed patent but not able to prove the technology had been available to the public and overruled both of the decisions made by the TIPO and the Committee of Appeal.

The TIPO accepted the invalidation filed against the disputed patent with the reason of lack of novelty based on the evidences of the sales invoices of the RX-4 disk brake molds and the product pictures of the RX-4 disk brake dated earlier than the application date (Jan. 18, 2001) of the disputed patent. The court considered that the said invoices only indicated the name of the traded product as “molds of the RX-4 disk brake” without any disclosure of the related technology and were provided by Fang Zhong Co. Ltd. which was the defendant of the lawsuit regarding infringement of the disputed patent (Case No. TTDC/92I15, May 23, 2006). Also, the said molds submitted by the invalidation petitioner could have been produced after the filing date of the disputed patent. Thus, the condition of “prior to applying for patent, has been published or put to public use” set forth in Article 98-1(1) of Patent Act 2001 could not be concretely established.

The invalidation petitioner also submitted the delivery bills issued by Honest Success Iron Co. Ltd. to Fang Zhong Co. Ltd. to prove the use of the disputed patent through manufacture and sales of the RX-4 disk brake castings occurred prior to the application date of the disputed patent. The court provided that as the said delivery bills (issued by Honest Success Iron Co. Ltd.) were submitted after the TIPO issued the decision of the invalidation against the disputed patent, and the manufacture and sales of the “molds of the RX-4 disk brake” and “RX-4 disk brake castings” had different factual bases, the delivery bills should be ruled out. However, the Court further explained that even though the delivery bills of the RX-4 disk brake castings had been acceptable evidences, according to the testimony by a manager of Honest Success Iron Co. Ltd., the purchasers of the RX-4 disk brake castings sold by Fang Zhong Co. Ltd. were uncertain, and only the companies having business relationships with Honest Success Iron Co. Ltd. could possibly see the disputed patent in Honest Success Iron Co. Ltd.’s plant prior to the filing date of the disputed patent. Thus, as only limited people had the chances of viewing the disputed patent, the condition of “put to public use” could not be established.

The Court also examined the delivery bills issued by the invalidation petitioner to Rong Zhan Co. for the RX-4 disk brake castings and the testimonies of the said lawsuit regarding infringing the disputed patent (Case No. TTDC/92I15, May 23, 2006). The court reasoned that as the delivery bills issued by the invalidation petitioner were submitted as evidences after the TIPO issued the decision of the invalidation against the disputed patent, such evidences should be ruled out. Nevertheless, the Court further explained that even though the delivery bills (issued by the invalidation petitioner) had been acceptable evidences, according to the testimony by an ex-employee of Fang Zhong Co. Ltd., the manufacture and sales of the “molds of the RX-4 disk brake” were under specific contractual relationship and only the related people had the chances of knowing the disputed patent. Therefore, the condition of “put to public use” could not be established.

Based on the reasons listed above, the Court pointed out that the submitted evidences could not sufficiently prove the disputed patent had been put to public use before its filing date, and ordered to overturn the TIPO’s and Committee’s decisions of invalidating the disputed patent.

By Akina Pan

International Affairs