經通國際智慧產權事務所

On April 29, 2010, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the patent application no. 93135570 with the title of “Light Guide Panels and Backlight Module” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Intellectual Property Court. In the said decision, the Court noted that the description of the disputed patent was sufficiently clear to enable person skilled in the art to understand the contents of and to practice the said invention, and invalidated the defendant’s decision based on the reason of that the disputed patent violated Article 26(2) and 26(3) of Patent Act.

The disputed patent application was filed with the TIPO on November 19, 2004, and then rejected by the TIPO. However, the applicant of the disputed patent, Foxconn Electronics Inc. (Foxconn), subsequently filed a request of reexamination together with the submission of amended specification and claims. The TIPO then reexamined the disputed patent application and issued a rejection based on the reason of that the disputed patent breached Article 26(2) and 26(3) of Patent Act by being insufficiently clear to enable person skilled in the art to understand the contents of and to practice the disputed patent. And the subsequent appeal filed by Foxconn was also rejected by the Committee of Appeal of the Ministry of Economic Affairs.

Not giving up, Foxconn filed an administrative lawsuit with the IP Court. After reviewing the disputed patent, the Court concluded that the description of the disputed patent clearly provided the information including concrete structures of light guide panels for person skilled in the art to understand, and the disputed patent adhered to Article 26(2) and 26(3) of Patent Act.

Based on the reason above, the Court invalidated the decisions by the TIPO and the Committee of Appeal, and ordered the defendant to bear the appellant’s litigation costs.

Organized and translated by Jenny Yu

International Affairs