經通國際智慧產權事務所

On December 27, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the invention application with the title of “The Method of Recycling Hydroxides from Compound Liquor ” filed on October 12, 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. In the said decision, the Court noted that the Advance Notice of Patent Rejection and Final Rejection issued by the defendant did not sufficiently or lawfully establish the rejection against the disputed patent. And the defendant overlooked the fact that the disputed patent was already granted in the United States, Europe, Korea and China.

After the disputed patent was initially rejected, the appellant filed a request of reexamination, but the defendant then issued an Advance Notice of Patent Rejection on March 16, 2005. However, after the amendments of the scope of the disputed patent were submitted by the appellant on April 22, 2005, the defendant still issued a Final Rejection against the disputed patent on September 28, 2005. And the appellant appealed the disputed patent to the Taipei High Administrative Court.

Regarding the defendant’s claim of that the disputed patent breached Article 26(4) of Patent Act by including indefinite terms of “cations”, “cation exchange materials”, “compound”, “cations and anions” and “cation exchange materials in hydrogen form”, the Court noted that according to the Patent Examination Standards 2.1.25 and 2.1.42, when considering if the scope of a patent was definite, ordinary knowledge in the art and prior arts shall be considered. Thus, as all of the said indefinite terms were included in the prior arts granted by the defendant and the disputed patent was granted in the United States, Europe, Korea and China, the defendant unlawfully regarded the said terms as indefinite.

The Court further noted that according to Article 43(2) of Patent Act, “When a patent application is found not patentable, the reasons therefore shall be given in the written decision of examination” and as set forth in Article 96(1) of Administrative Procedure Act, “An administrative disposition rendered in writing shall give the reasons and legal basis of the disposition”. However, because the Final Rejection against the disputed patent only provided that the independent claims of the disputed patent lacked patentable subject matter without any indication of the patentability of the sub claims, and the defendant’s statement of the Court debate provided that the sub claims of the disputed patent were patentable, the Court deemed the Final Rejection to be a breach of Section 3.6, Chapter 1, Volume 2 of Important Points of Inventive Step Examination. Because the said section of Important Points of Inventive Step Examination provided that the patentability of the sub claims of a patent should be based on individual claim examination regardless of the lack of inventive step of the independent claims, and the said Final Rejection did not include any indication of the patentability of the sub claims of the disputed patent.

Furthermore, the Court noted that according to Article 46(2) of Patent Act, “if there is any reason to deny the patentability of an invention patent through the re-examination procedure, the Patent Authority shall, before rendering a re-examination decision, send to the applicant a notice requesting that a response be made within a specified time limit”. However, the said Advance Notice of Patent Rejection excluded any indication of the patentability of the sub claims of the disputed patent, and only indicated the terms of “cations”, “cation exchange materials”, etc. to be indefinite without clearly explaining why the said terms were indefinite. And the said Final Rejection even included additional defects of the disputed patent not disclosed in the said Advance Notice of Patent Rejection. Thus, the appellant was not properly provided with the chance of amending or making supplemental submission for the disputed patent before the issuance of the Final Rejection.

Based on the reasons above, the Court invalidated the decisions by the TIPO and the Committee of Appeal, and ordered the disputed patent to be reexamined by the defendant.

Organized and translated by Angela Shen

International Affairs