經通國際智慧產權事務所

On March 15, 2007, the Taipei High Administrative Court 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 patent application with the title of “A Technology of Technical Appraisal System and Method”. The Court pointed out that each claim should be examined, and an application should not be rejected entirely only because the dependent claims contain the mathematic formulae or the related information thereof.

The disputed patent application was filed with the TIPO on July, 10, 2001 and rejected by the reason of lack of utilization of rules of nature after the request of reexamination. After the dismissal against the subsequent appeal, the appellant filed an administrative lawsuit with the Taipei High Administrative Court.

The Court pointed out that the disputed patent application contained serial procedures of concrete transformation of information through use of option theory and computer hardware/software in order to solve the problem of appraisal and sought the protection for technical appraisal system instead of the appraisal principle based on the option theory. Also, the Court provided the explanation of that claim 13 of the disputed patent application employed the public stock prices, public patent databases and public financial report databases to conduct mathematic manipulations and calculations through the combination of option theory and computer hardware/software in order to solve the technical problem of appraisals; and such technologies are not the rules of nature but belong to the scope of the utilization of the rules of nature. Thus, the Court deemed the TIPO’s rejection against the disputed patent application with the reason of unsatisfactory fulfillment of the principle of utilization of rules of nature invalid.

The Court further noted that according to Article 19 of Patent Act and the Examination Standards for the Inventions Related to Computer Software published by the defendant, when the claims of a patent application provided indication of the methods of using computer hardware/software to concretely transform information, the said patent application satisfies the principle of utilization of rules of nature and cannot be rejected entirely only because partial coverage of economic principles, human decisions and exercise of human intelligence. Considering the TIPO rejected the disputed patent application with the reason that only the economic principle of the option theory and some calculation formulae were covered by the disputed patent application, and no means of technology were introduced, the Court reviewed the disputed patent application and provided that the said reason by the TIPO was incorrect since the disputed patent application did include concrete transformation of the data.

On the other hand, the Court provided that other than claim 1 and 13 of the disputed patent application, all the other claims are sub claims; and as stipulated in the Examination Standards of Patent published by the defendant, since a sub claim is dependent on an independent claim, if a claim meets the requirements of patentability, so does its sub claim. Also, according to Article 18 of the Implementing Regulations of the Patent Act, “the claims may contain the chemical or mathematical formulae”. Thus, as the TIPO rejected the disputed patent application entirely because the sub claims contained the mathematic formulae without actually determining the patentability of each claim, the Court ordered to overturn the TIPO’s and Committee’s decisions, and the disputed patent application to be reexamined.

Organized and Translated by Akina Pan

International Affairs