經通國際智慧產權事務所

On May 10, 2007, following the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the opposition filed against the invention patent with the title of “Water-washing Type Slag Processing Method”, the Committee of Appeal of the Ministry of Economic Affairs’ and the Taipei High Administrative Court’s rejections against the subsequent appeals, the Supreme Administrative Court remanded the case to the Taipei High Administrative Court. In the said decision, the Supreme Administrative Court examined the decision made by the Taipei High Administrative Court and noted that the evidence submitted by the appellant included the claim of that the method of ore dressing and slag processing are connected among metallurgical professionals; however, without any indicated reasons, the said claim was not examined by the Taipei High Administrative Court.

According to Article 20-2 of Patent Act, the inventive step was defined by the Supreme Administrative Court as not easily achieved by person skilled in the art. In addition, the Supreme Administrative Court pointed out that if the technical content of the submitted evidence was of the same or connected field as/to the scope of technology of an invention patent, this invention may be easily achieved by person skilled in the art of the submitted evidence. And with the purpose of proving that the disputed patent could be easily achieved by person skilled in the art, the appellant submitted the publication of Lecture Notes of Introduction to Ore Dressing authored by professor Min-Xing Tsai of National Cheng Kung University in September 1992. Because the said publication disclosed the method of elutriation of ore, and the method of processing post water-washing slag of steel making furnace was disclosed in the claims of the disputed patent, the Supreme Administrative Court noted that whether or not the two said methods were of connected fields of technology should be investigated. Therefore, the appellant’s petition of consulting with professional organizations to confirm if ore dressing and furnace slag processing methods were considered to be connected among metallurgical professionals was deemed as necessary by the Supreme Administrative Court. Since the Taipei High Administrative Court did not grant the said petition and confirmed the two said methods to be different without providing the reason of omitting the consulting with professional organizations, the decision by the Taipei High Administrative Court was concluded to be lacking sufficient reason and unlawful by the Supreme Administrative Court.

Based on the reasons above, the Supreme Administrative Court remanded the case to the Taipei High Administrative Court.

Organized and translated by Tony Chen

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