經通國際智慧產權事務所

On October 26, 2007, the Taiwan Intellectual Property Office’s (TIPO’s) decision of accepting the patent invalidation against the utility model patent with the title of “Structure of Power Supply for Personal Computer” filed on March 26, 2004 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 noted that the subject being examined should be whether or not Article 95 of Patent Act was breached. As the fact of that the proposed prior art was “filed prior to but laid-open or patented after the filing” of the disputed patent and the said status could not be influenced by the invalidation proceeding of the said prior art, the appellant’s request of suspending trial for the said invalidation proceeding was rejected by the Court.

After the disputed patent was initially granted by the TIPO, an invalidation was filed against the disputed patent and accepted (by the TIPO) on September 29, 2006. The appellant then filed an appeal; and following the rejection against the said appeal, a subsequent administrative lawsuit was filed with the Court. The Court noted that the filing date of the disputed patent was later than that of the proposed prior art but earlier the publication date of the proposed prior art. Thus, the prior art could only be employed to examine the novelty of the disputed patent. As the main technical characteristic indicated in the disputed patent were the same as those disclosed in the said prior art, the defendant’s decision of invalidating the disputed patent was affirmed by the Court.

Regarding the examination of the appellant’s argument of that the said prior art plagiarized from the businesses transactions between the company of the said prior art’s patentee and TigerDirect.ca, Inc. (TigerDirect), the Court pointed out that even though the said argument was true, the said patentee could only gain the concept of the said prior art. In addition, as set forth in Article 108 of Patent Act, the filing of a patent application is composed of application forms, a specification and necessary drawings. Thus, since the same concept of patent may develop into different patents due to different methods and embodiments, the Court concluded that the evidence submitted by the appellant was insufficient to establish that the patentee of the prior art was not the original inventor.

At last, the Court examined the appellant’s claim of that the defendant’s said acceptance of the invalidation against the disputed patent should be dependent on the validity of the said prior art; and the administrative lawsuit should therefore be suspended until the invalidation proceeding against the said prior art was completed. However, the Court noted that according to Article 95 of Patent Act, if a prior art is “filed prior to but laid-open or patented after the filing” of the disputed patent, no patent right may be granted. Since the result of the invalidation proceeding against the said prior art will not influence the said condition of “filed prior to but laid-open or patented after the filing”, the appellant’s request of suspending the administrative lawsuit was rejected.

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 Akina Pan

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