經通國際智慧產權事務所

On July 18, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the patent invalidation against the utility model patent with the title of “The Combination Structure of Stator of Heat Dissipation Fan” filed on January 18, 1994 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 two invalidations were filed against the disputed patent, and because the invalidation N01 was rejected based on the same set of facts and evidence of those of the invalidation N02, based on the applicable non bis in idem principle (no legal action can be instituted twice for the same cause of action) set forth in the Patent Act effective at the time of the defendant’s issuing of the decision for invalidation 02, it was unnecessary to examine the invalidation N02.

After the disputed patent was initially granted by the TIPO, an invalidation was filed against the disputed patent but rejected (by the TIPO) on December 21, 2001. The appellant then filed an appeal and a subsequent administrative lawsuit (following the rejection against the said appeal). According to the decision of September 4, 2003 by the Taipei High Administrative Court, the proposed prior art 1 did not provide sufficient reasons to establish the lack of inventive step of the disputed patent, but the non bis in idem principle should not apply to the combinations of proposed prior art 2~4. Thus, the Taipei High Administrative Court invalidated the decisions by TIPO and the Committee. However, the patentee of the disputed patent further appealed the decision to the Supreme Administrative Court that reversed the Taipei High Administrative Court’s ruling by concluding that the non bis in idem principle should apply to the combinations of proposed prior art 2~4, and ordered the defendant to reexamine the said invalidation. But the defendant then against made the decision of rejecting the said invalidation. Not giving up, the appellant appealed the decision to the Committee of Appeal and then filed another administrative lawsuit with the Taipei High Administrative Court after the rejected appeal.

The Taipei High Administrative Court first examined the applicability of the non bis in idem principle and noted that two invalidations were filed against the disputed patent. The Court pointed out that Evidence 2~4 presented in invalidation 01 (filed on 19 October, 1998) were prior art 2~4 proposed in invalidation 02. However, the said invalidation 01 was originally accepted by the TIPO based on the reason of lack of inventive step but then appealed to the Committee of Appeal by the appellant. Based on the reason of lack of clear claims to establish lack of novelty or inventive step, the Committee overruled the TIPO’s decision, and then the TIPO reissued a rejection against invalidation 01. The appellant then again filed an appeal with the Committee with the claim of lack of inventive step. And the Committee then rejected the said appeal by noting that based on the said Evidence 2~4, the disputed patent could not be proven to be easily achieved by the person skilled in the art. On the other hand, as set forth in the Examination Standards 1.9.18 published by the defendant in July, 2000, the non bis in idem principle was applicable based on evidence submitted for precedent after the stage of appeal. Moreover, for invalidation 02, the Supreme Administrative Court also concluded that the non bis in idem principle should apply to the combinations of proposed prior art 2~4. Even though the appellant claimed that the non bis in idem principle was not included in the effective Patent Act at the time of the filing of the said invalidation, the Taipei High Administrative Court noted that for procedural matters including the application of non bis in idem principle, the doctrine of observing new laws should be applied. And according to the effective Patent Act at the time of the defendant’s issuing of the decision for invalidation 02, the non bis in idem principle should apply.

As for the appellant’s claim of that the defendant did not examine the disputed patent’s lack of inventive step based on the various combinations among prior art 1~4, the Court noted that the invalidation filed by the appellant only included the argument of that the structural characteristics of the disputed patent were disclosed by prior art 1; and neither the arguments regarding the combinations among prior art 1~4 nor the supporting reasons thereof were included in the invalidation filed by the appellant.

The appellant also argued that the disputed patent did not disclose the matters essential to the practice of the disputed patent. Nevertheless, the Court pointed out that the matters proposed to be essential by the appellant was in fact not under the scope of technology which the disputed patent sought to protect

At last, the Court examined the appellant’s argument of that the proposed prior art 1 could establish the lack of inventive step of the disputed patent and noted that the disputed patent contained structures and technical characteristics different from the said prior art 1. Therefore, since the disputed patent could not be proven to be easily achieved by the person skilled in the art based on the said prior art 1, the said prior art 1 was not sufficient to establish the lack of inventive step of the disputed patent.

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 Jenny Yu

International Affairs