經通國際智慧產權事務所

On March 27, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the patent invalidation against the new design patent with the title of “Vehicle Light” filed on December 14, 2000 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 confirmed that the verification of the cited evidence’s time of entering the market was of acceptable corroborative evidence instead of new evidence.

1. The appearances of the lights disclosed in the three prior arts proposed by the defendant were very much different from that disclosed in the disputed patent.
2. The person skilled in the art could not easily achieve the unique appearance disclosed in the disputed patent.
3. Because the submitted evidence of the magazine “MOTORCYCLE PARTS & ACCESSORIES BUYER’S GUIDE” disclosing the design of the disputed patent was not clearly dated, the defendant conjectured its publication date to be December 31, 2000 and later than the filing date of the disputed patent.

The appellant then appealed the said decision by the defendant to the Taipei High Administrative Court. After examining the case, the Court pointed out that once the defendant made the decision regarding the said invalidation based on the submitted evidence and reasons, new evidence should not be accepted for the administrative remedy procedure. However, the said restriction could not apply to supplemental evidence aiming at strengthening the objectivity of the originally submitted evidence. Thus, as prior to the defendant’s decision of rejecting the said invalidation, the appellant already claimed the publication date of the said magazine to be earlier than the filing date of the disputed patent, the Court allowed the appellant’s request of subpoenaing the employees of Jute Industrial Co., Ltd. which advertised the lights disclosing the design of the disputed patent in the said magazine. And based on the following testimony, the Court deemed the publication date of the said magazine to be in August 2000 instead of December 31, 2000.

1. The presented invoice issued for the said advertisements was dated August 31, 2000 and the entrusting of advertisements was always earlier than and usually 2~3months before the issuance date of the invoice.
2. With the consideration of that an exhibition was going to be held in Germany in September, 2000, the said magazine had to be published before the said exhibition, and most likely in August 2000.

At last, the Court noted that the advertised Asian Car Exhibition from November 23, 2000 to November 26, 2000 shown in the said magazine should be later than the publication date of the said magazine.

Based on the reasons above, the Court accepted appellant’s claims of invalidating the decisions by the TIPO and the Committee of Appeal.

Organized and translated by Angela Shen

International Affairs