經通國際智慧產權事務所

On November 22, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the invention application with the title of “Construction and Installation of Diaphragmatic and Capillary Tubal Sound Amassment and Resonance Chamber Body” filed on March 7, 2001 and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. The Court made the said decision by noting that the defendant (TIPO) did not include the patentable claims (for the appellant’s consideration of amendment) in the Advance Notice of Patent Rejection and the prior arts cited by the defendant were insufficient to prove the lack of inventive step of the disputed patent.

The disputed patent was initially rejected on March 19, 2003. Subsequently, the defendant filed a request of reexamination but the defendant then issued an Advance Notice of Patent Rejection Against Reexamination on July 21, 2004. However, after the amendment of the scope of the disputed patent were submitted by the appellant on August 18, 2004, the defendant still issued a Final Rejection against the disputed patent on September 15, 2004. And after the following appeal was rejected, the appellant filed a lawsuit with the Taipei High Administrative Court.

After reviewing the submitted evidence, the Court pointed out that the Final Rejection issued by the defendant included the reason of that the disputed patent contained undefined and intangible description. However, because the said reason was not included in the Advance Notice of Patent Rejection issued prior to the Final Rejection, the defendant breached Article 46 of Patent Act and Article 102 of Administrative Procedure Act by not providing the appellant a chance to be informed of the required amendments/ supplemental submission for preventing the Final Rejection.

In addition, the Court provided that according to the defendant’s statement of the Court debate, the sub claims 39, 40, 81, 82, 83, 85, 113 and 114 of the disputed patent was patentable. And according to the Patent Examination Standards 1.2.27, a sub claim should be examined individually instead of being rejected only because its independent claim is not patentable. Therefore, the Advance Notice of Patent Rejection and the Final Rejection issued by the defendant incorrectly rejected the disputed patent as a whole without specifying the patentability of sub claims 39, 40, 81, 82, 83, 85, 113 and 114.

At last, based on the technology comparison report provided by the National Taiwan University under the Court’s request, the two prior arts cited by the defendant had different appearances, components, designs, functions and installation methods from those of the disputed patent; and the only similarity among the disputed patent and the two said prior arts is the solidity. Thus, the Court deemed that the lack of inventive step of the disputed patent could not be sufficiently established as suggested by the defendant.

Based on the reasons above, the Court invalidated the decisions by the TIPO and the Committee of Appeal, but also overruled the appellant’s claim of granting the disputed patent.

Organized and translated by Eunice Yang

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