經通國際智慧產權事務所

Self-deputed Patent Analysis Was Regarded As a Private Document

On November 29, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the patent invalidation against the invention patent with the title of “Tray for Ball Terminal Integrated Circuits” filed on July 18, 1994 and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were withheld by the Taipei High Administrative Court. In the said decision, the Court noted that the self-deputed patent analysis submitted by the appellant was of private document with suspected evidencing ability and contained drawing provided by the appellant instead of those of the proposed prior art 1.

For prior art 1 proposed by the appellant, the Court reviewed the purchasing record, invoice dated December 20, 1993 and the corresponding product identification numbers of RHM-667, RHM-663 and RHM-660 of the products sold to Motorola, Inc., and contrary to statement provided by the patentee of the disputed patent, the Court confirmed that prior art 1 was admissible evidence. However, as the technologies disclosed in the disputed patent and prior art 1 were different, the Court confirmed the inventive step of the independent claim 1, 4 and 8 of the disputed patent. Moreover, the Court noted that because the technical structure of the disputed patent was not disclosed in the prior arts 1, 3, 4, 5 (proposed by the appellant) and the various combinations thereof, the lack of novelty and inventive step of the disputed patent could not be established.

On the other hand, the appellant pointed out that the technical characteristic of “adjacent neighboring” was not disclosed in claim 4 and 8 of the disputed patent, but the defendant’s rejection against the said invalidation did not examine the existence of “adjacent neighboring” in the disputed patent and thus breached the principle of claim by claim examination. However, the Court noted that even though the exact words of “adjacent neighboring” could not be found in the said claim 4 and 8, the gist of the two said claims contained the concept of “adjacent neighboring” and the novelty of claim 1, 4, 8 should be confirmed accordingly. Therefore, the appellant’s claim of that the said rejection by the defendant breached the principle of individual claim examination was not accepted by the Court.

In addition, with the reason of the lack of comparisons based on the combinations of prior art 1, 3, 4 and 5, the appellant provided the argument of that the said rejection by the defendant breached the examination standards of inventive step. However, the Court did not accept such argument based on the following reasons:

1. The prior art 1, 3, 4 and 5 did not contain the scope of technology and functions of the disputed patent, nor could any combinations of the said prior arts achieve the scope of technology and functions of the disputed patent.
2. Only prior art 1 was provided when the appellant filed the said invalidation.
3. Comparisons among the disputed patent and prior arts 3, 4 and 5 were only submitted when filing the administrative lawsuit.
4. Prior art 3, 4 and 5 were foreign patent publications, and the following documents were not submitted by the appellant during the examinations of the said invalidation and appeal:
   • The Chinese translations of the said prior arts
   • The related technology analysis
   • The description of how the disputed patent could be achieved through the combinations of the proposed prior arts
5. The submitted patent analysis was of a private document deputed by the appellant to be produced by Yen Tjing Ling Industrial Research Institute of National Taiwan University and had suspected evidencing ability.
6. The drawings compared to the disputed patent in the said patent analysis was provided by the appellant instead of those of the proposed prior art 1.

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

Organized and translated by Louie Lin

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