經通國際智慧產權事務所

On January 30, 2007, the Taipei High Administrative Court upheld the Taiwan Intellectual Property Office’s (TIPO) and the Committee of Appeal of the Ministry of Economic Affairs’ decisions of rejecting the invalidation filed against the patent with the title of “Retaining Bracket of Curtains Slide Rail”. In the said decision, the Court noted that the examination of patent invalidation was based on the reasons and evidence submitted for the invalidation filing under the adversary system. However, as during the trial, the appellant submitted new reason not included in the initial invalidation filing, the Court deemed the said new reason to be unacceptable.

The Court noted the following arguments by the appellant:

• Based on only prior art No.1 or only prior art No. 2, the disputed patent could not be easily accomplished.
• The disputed patent could be easily derived from the combination of prior art No.1 and prior art No. 2.

And based on the said arguments, the Court concluded that the appellant does not deny that the disputed patent could not be easily derived from only prior art No.1 or only prior art No. 2. Thus, as the reasons and evidence submitted for the invalidation filing did not include the combination of prior art No.1 and prior art No. 2, the lack of inventive step of the disputed patent could not be established. Furthermore, the Court pointed out that the examination of patent invalidation was based on the reasons and evidence submitted for the invalidation filing. Since the combination of prior art No.1 and prior art No. 2 was only claimed during the trial, the Court disregarded the appellant’s claim about the combination of prior art No.1 and prior art No. 2. On the other hand, the supplemental argument submitted by the appellant on January 12, 2007 provided that either prior art No.1 or prior art No. 2 could independently establish the lack of inventive step of the disputed patent. However, the Court noted that the said supplemental argument incorrectly limited the definition of inventive step to the sole comparison of functions; and the disputed patent had better function than prior art No.1. As for prior art No. 2, the Court noted that only the diagram of prior art No. 2 might contain partial similarity with the disputed patent.

Based on the reasons listed above, the Court concluded that the lack of inventive step could not be established for the disputed patent, and ordered to uphold the TIPO’s and the Committee of Appeal’s decisions of rejecting the invalidation filed against the disputed patent.

Organized and translated by Eunice Yang

International Affairs