經通國際智慧產權事務所

On February 8, 2007, the Taipei High Administrative Court overruled the Taiwan Intellectual Property Office’s (TIPO) and the Committee of Appeal of the Ministry of Economic Affairs’ decisions of rejecting patent application no. 089120281 with the title of “Making an Olefin Product from an Oxygenate”. In the said decision, the Court ruled that the defendant incorrectly rejected the disputed patent by reason of lack of inventive step.

The Court examined the case and provided the following statements,

1. According to Article 25(1) and Article 26(1) of Patent Act, the scope of a patent should be based on the description and diagrams included in the patent application.
2. Based on the description of the disputed patent amended on July 8, 2004, the embodiment of the disputed patent was a method of “continuous manufacture” of olefin instead of “batch manufacture”.
3. The quantity of the catalyst indicated in the said method of “continuous manufacture” fluctuated because the said catalyst was produced through regeneration.
4. According to the letter dated December 26, 2006 by the Industrial Technology Research Institute of Taiwan, when the quantity of the catalyst was fixed, the ACFE (average catalyst feedstock exposure) index equaled WHSV (weight hourly space velocity) multiplied by the time; but when the quantity of the catalyst was continuously resupplied, the ACFE index could not be calculated.
5. Based on the confirmation of that the embodiment of the disputed patent was a method of “continuous manufacture” and the ACFE index of the disputed patent equaled WHSV multiplied by the time, the defendant rejected the disputed patent application.

Based on the reasons listed above, the Court noted that, according to the letter by the Industrial Technology Research Institute of Taiwan, the defendant confirmed that the embodiment of the disputed patent was a method of “continuous manufacture”, but mistakenly concluded that the ACFE index of the disputed patent equaled the WHSV multiplied by the time. Therefore, the defendant incorrectly rejected the disputed patent application with the reasons of that the disputed patent lacked inventive step and could easily be conceived by ordinarily skilled persons in the relevant art based on existing prior art. In addition, since the lack of inventive step could not be established for the independent claim 1 of the disputed patent application, the sub claims 2~18 (dependent on claim 1) could not be established to be lack of inventive step. Thus, the Court invalidated the decisions by the TIPO and the Committee of Appeal, and ordered the disputed patent to be reexamined.

Organized and translated by Angela Shen

International Affairs