經通國際智慧產權事務所

On December 20, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the patent opposition against the invention patent with the title of “Assembly Fan and the Fan Frame Thereof” filed on August 1, 2001 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 confirmed that the disputed patent lacked inventive step and noted that the defendant lawfully rejected the amendment of the scope of the disputed patent.

After the said opposition was filed against the disputed patent, the appellant filed a request of amending the scope of the disputed patent with the defendant (TIPO) on Aug. 21, 2003. However, based on the reason of that the amendment proposed by the appellant deleted the description regarding the item of the “frame” of the fan, and the scope of the disputed patent was consequently extended by the removal of the limitations (due to the indication of the item of the “frame”). As Article 44-1-4-1 of Patent Act was therefore breached, the Court approved the defendant’s rejection against the said amendment proposed by the appellant.

As for the appellant’s claim of that the defendant breached the “Participation Principle of Involved Party” set forth in Article 41-1 of Patent Act, the Court noted that according to Article 41-1 of Patent Act, the patent regulating organization can request the applicant to submit amendment of the scope of the patent only if there is unclear description, error of recordation or the scope of the patent is too broad. Therefore, as the patent regulating organization is authorized to but not required to request the applicant to submit amendment of the scope of the patent, and the disputed patent did not satisfy the three conditions set forth in Article 41-1 of Patent Act, the Court rejected the appellant’s said claim.

The appellant also claimed that the defendant’s decision breached the “Clear and Definite Principle” and “Individual Claim Examination”. However, the Court rejected the said claim by pointing out that the Final Rejection against the disputed patent included individual claim examination regarding the inventive step of each claim together with detailed reasons of establishing the lack of inventive step of the technical characteristics of each claim.

Based on the prior art cited by the said opposition, the Court noted that the technologies of the disputed patent were either disclosed in the said prior art or could be easily accomplished by the person having ordinary skill in the art. In addition, the design of the said prior art produced better effect than that of the disputed patent. Thus, the Court concluded that the disputed patent lacked inventive step.

Based on the reasons above, the Court confirmed the decisions by the TIPO and the Committee of Appeal to be lawful and rejected the administrative lawsuit.

Organized and translated by Jenny Yu

International Affairs