經通國際智慧產權事務所

On November 8, 2007, the Taipei High Administrative Court ordered to invalidate the new design (Issue No.: 086028) with the title of “Yacht” and overruled both the dismissal by the Committee of Appeal of the Ministry of Economic Affairs and the rejection by the Taiwan Intellectual Property Office (TIPO) against the filed invalidation. The Court pointed out that comparison of similarity for a new design should be based on the appearance as a whole instead of individual components.

The aforementioned invalidation was filed with the TIPO on January, 12, 2004 and rejected by the TIPO. After the dismissal against the subsequent appeal, the appellant filed an administrative lawsuit with the Taipei High Administrative Court.

The Court examined the following evidences submitted by the defendant:

◆Taiwan High Court Tainan Branch Court’s decision of the criminal lawsuit (Case No. THTC/94A435, September 2, 2005) related to the disputed patent

◆The photocopy of the disputed patent with the filing date of July 5, 2002

◆The rejection issued by the defendant against the new design application no. 91303580 filed by the appellant

◆The drawings of the yacht-manufacturing contract signed by the appellant on August 28, 1999

◆The yacht performance evaluation report by a third party dated November 29, 1999

◆Approval letter dated July 18, 2000 by the Coast Patrol Directorate General for the relocating of the yacht (manufactured by the defendant) for exporting purpose

◆The labor insurance subscription record showing the inventor of the disputed patent was employed by the appellant and its affiliated company from February 25, 1982 to December 31, 1999.

The Court pointed out that after filing the invalidation against the disputed patent, the appellant made the late submission of the evidence including the Taiwan High Court Tainan Branch Court’s decision of the criminal lawsuit (Case No. THTC/94A435, September 2, 2005) related to the disputed patent. Even though the written deposition of the aforementioned criminal lawsuit was only submitted in the subsequent appeal, according to the headnote of Supreme Administrative Court’s ruling on Case No. SAC/72D1419, November 11, 1983, as the said written deposition was indicated in the aforementioned late submission of the evidence and submitted before the end of the invalidation proceeding, the said written deposition was incorrectly viewed as new evidence by the defendant and should be categorized as the supplemental evidence of the filed invalidation against the disputed patent. According to the said written deposition, the Taipei High Administrative Court further affirmed the Judge’s (of the aforementioned criminal lawsuit) statement of that both the inventor of the disputed patent and the appellant agreed with the fact that the defendant filed the new design (application no. 91303580) containing the yacht drawings in the aforementioned yacht-manufacturing contract on July 8, 2002. Moreover, the rejection issued by the defendant against the new design application (no. 91303580) was based on the reason of similarity to prior art of the disputed patent. Thus, the Court reasoned that the drawings of the yacht in the yacht-manufacturing contract are similar to the drawings of the disputed patent.

The Court also provided that according to the evidence analysis included in the decision of the said criminal lawsuit, the drawings of the yacht contained in the disputed patent are, as a whole, similar to the drawings of the yacht in the yacht-manufacturing contract. However, the defendant did not consider the aforementioned analysis of evidence because the decision of the said criminal lawsuit was subject to further appeal. The Court explained that as the admissibility of analysis of evidence provided by another court’s decision should not be influenced by the status of the regarding decision, the defendant inadequately neglected the demonstration derived from actual evidence by the Taiwan High Court Tainan Branch Court. The Court also noted that as the inventor of the disputed patent was an employee of the appellant and its affiliated company with the job content of maintenance, sales activities and plant operation from February 25, 1982 to December 31, 1999, it would not be reasonable for the inventor of the disputed patent to claim not knowing the drawings of the yacht in the manufacturing contract. Therefore, the court agreed with the appellant’s claim of that the drawings of the disputed patent were plagiarized from the said yacht-manufacturing contract.

In addition, the yacht design similar to the drawings of the disputed patent was examined for a performance evaluation report dated November 29, 1999, and manufactured by the appellant under the contact signed on August 28, 1999. Subsequently, the appellant finished building the said yacht in July 2000 and the Coast Patrol Directorate General issued the approval letter for the appellant’s request of relocating the said yacht for exporting purpose on July 18, 2000. Since the yacht design similar to the drawings of the disputed patent had been put to public use for more than one year prior to the filing date (July 5, 2002) of the disputed patent, the disputed patent is in violation of Article 107-1(1) of Patent Act 2001, and the defendant incorrectly approved the novelty of the disputed patent.

The inventor of the disputed patent also submitted the evidence to demonstrate the differences between the drawings of the yacht contained in the disputed patent and the drawings of the yacht in the yacht-manufacturing contract. However, as the comparison of similarity among new designs should be based on the overall visual effects but only differences among the components of the drawings were indicated in the said evidence, the Court deemed that the evidence submitted by the inventor was unacceptable.

Based on the reasons listed above, the Court ordered to overturn the TIPO’s and Committee of Appeal of the Ministry of Economic Affair’s decisions, and accepted the invalidation against the disputed patent.

By Eunice Yang

International Affairs