經通國際智慧產權事務所

On June 27, 2005, the Taiwan Intellectual Property Office (TIPO) rejected the opposition filed against patent publication no. 503350 with the title of “Intelligent Dual Transmission Messenger Device”. As the subsequent appeal was also rejected by the Committee of Appeal of the Ministry of Economic Affairs, the appellant filed an administrative lawsuit based on the claim of two prior arts with the Taipei High Administrative Court. The Court reviewed the evidences submitted by the appellant and rejected the administrative lawsuit with the reason of that the two claimed prior arts could not establish the lack of novelty or inventive step of the disputed patent

The evidence no.1 claimed as prior art by the appellant was patent publication no. 89111550 with the application date of June 14, 2000, the publication date of December 11, 2001 and the title of “Integration System of Personal Digital Assistant Messenger and Mobile Phone Module”. After examining evidence no.1, the court reasoned that the lack of novelty is set forth as “prior to applying for patent, has been published or put to public use” in Article 20-1(1) of Patent Act 2001. Since the application date of the claimed prior art in Taiwan was later than the application date as November 27, 1998 of the disputed patent, the lack of novelty of the disputed patent could not be affirmed.

For the evidence no. 2 of an published U.S. patent no. 5894595 with the application date of February 21, 1997, the publication date of April 13, 1999 and the title of “Personal Mobile Communication System”, the Court pointed out that “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,” set forth in Article 20-1 of Patent Act 2001 should only be based on prior domestic applications and publications under the principle of patent territoriality. Thus, even though the application date of the said U.S. patent was earlier than that of the disputed patent, Article 20-1 of Patent Act 2001 was not applicable. The Court further noted that the lack of novelty and inventive step of the disputed patent could not be established because the publication date of the said U.S. patent was later than the application date of the disputed patent.

Based on the reasons listed above, the Court upheld the decisions by the TIPO and the Committee and rejected the administrative lawsuit.

By Burke Tsai

International Affairs