Request of Amendment Is not Allowed After Official Grant
2011/02/26 TaiwanOn November 15, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the filed opposition against patent application with the title of “High Performance Side Blow Heat-Dissipating Apparatus” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Taipei High Administrative Court. Regarding the said decisions by the TIPO and the Committee of Appeal, the Court noted that because the content of claims 7, 8, 10, 11 and 13 of the disputed patent were disclosed in the prior art proposed in the filed opposition, the novelty of the disputed patent could not be established.
The Court further noted that the technical feature indicated in claims 7, 10 and 11 of the disputed patent was air intake not of round shape, and the said technical feature was disclosed in claim 1 and diagrams 3 and 4 in the prior art proposed in the filed opposition. In addition, the Court pointed out that the technical features of “baffle board” and “heat sink” indicated in claims 8 and 13 of the disputed patent were the same to the technical feature disclosed in the said prior art and could be easily accomplished by a person having ordinary skill in the art.
As for the appellant’s claim of that differences between the disputed patent and the said prior art existed and the defendant’s decision of accepting the said opposition breached Article 9 of Administrative Procedure Act by not considering the circumstances disadvantageous to the appellant, the Court noted that prior to the acceptance of the said opposition, the defendant issued an official notification to request the appellant to amend the scope of the disputed patent so that the patentability could be achieved. However, as the appellant did not follow the said official notification to amend the scope of the disputed patent, the said opposition was lawfully accepted.
Based on the reasons listed above, the Court ordered to reject the appellant’s claims.
Organized and translated by Akina Pan
International Affairs
