經通國際智慧產權事務所

On May 9, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the utility model patent application with the title of “Monocrystal Ni-Base Superalloy” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Taipei High Administrative Court. In the said decision, the Court deemed that the defendant’s rejection against the disputed patent was based on the result of formality examination instead of the substantial examination claimed by the appellant.

The Court affirmed the defendant’s argument of that the all claims of the disputed patent only contained superalloy’s material characterizations, composition, weight distribution, purposes and the extended purposes. As the disputed patent did not satisfy the requirement of being related to the form, construction or installation as set forth in Article 91-1 of Patent Act, the Court confirmed the said rejection issued by the defendant to be lawful.

In addition, the appellant provided the argument of that the claim-by-claim examination conducted by the defendant was substantial examination, and unlike the formality examination required for utility model, substantial examination was not applicable to utility model. Nevertheless, the Court defined “formality examination” as checking if the requirement set forth in Article 91-1 of Patent Act were fulfilled and pointed out that the defendant only conducted a formality examination.

Based on the reasons above, the Court rejected the administrative lawsuit filed by the appellant.

Organized and translated by Eunice Yang

International Affairs