On June 21, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the patent invalidation against the invention patent with the title of “Screw Mold” filed on January 18, 2000 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 for evidence of figures without word descriptions, the measured dimensions could not be regarded as evidence, but the relative positions and ratios of components were acceptable evidence.

After reviewing the disputed patent and making the comparison with the submitted evidence, the Court provided the following statements:

1. The structure disclosed in the disputed patent was also disclosed in the submitted prior art 1.

2. The technical characteristics of the disputed patent were disclosed in the submitted prior art 4.

3. The combination of prior art 1 and 4 were sufficient to establish the lack of inventive step of the disputed patent.

As for the appellant’s arguments, the Court provided the following analyses:

1. Regarding the appellant’s argument of that the technology disclosed in the disputed patent could punch square drive screws and the technology disclosed in prior art 4 could not, the Court pointed out that the scope of the disputed patent did not include the limitation of punching square drive screws and in addition, based on the said prior art 4, the person skilled in the art could easily achieve punching screws drivable by square drive screws.

2. As for the defendant’s judgment of that the technical characteristics of the disputed patent were disclosed in prior art 4, the appellant claimed that the said judgment was based on the dimensions directly measured from prior art 4 (without word description) and breached Patent Examination Standards 2.3.5. The Court confirmed that for evidence of figures without word descriptions, measured dimensions could not be regarded as evidence, but noted that the said judgment by the defendant was actually based on the relative positions and ratios of components instead of direct measurements disclosed in prior art 4.

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 Dano Yi

Attorney at Law/Patent Attorney