經通國際智慧產權事務所

On January 30, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the patent invalidation against the invention patent with the title of “The Manufacture Method of Hetero-contraction Super Slim Fiber False Twisting Finished Yarn” filed on December 31, 1997 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 as the correction filed by the appellant changed the actual scope of the disputed patent and the applicable Patent Act did not stipulate the requirement of issuing an advance notice for rejected correction, the defendant’s decision was procedurally correct.

The Court noted that as set forth in Article 64-1 and 64-2 of Patent Act, an invention patentee may file an application for making corrections to the contents of the specification and drawings only for narrowing the scope of the claims, correction of the errors made in the specification and explanation of obscure descriptions; any amendment shall not exceed the scope of contents which were disclosed in the original specification or drawings while filing the patent application, and shall not substantially expand or alter the scope of the patent claims. As the appellant filed a request of correction of the disputed patent with the defendant after an invalidation was filed against the disputed patent, the Court examined the submitted correction and noted that for the said correction, the materials indicated in claim 1 and claim 2 and the method indicated in claim 5 were different from those indicated in the granted version of the disputed patent. Thus, the Court affirmed the defendant’s refusal against the said correction and its decision of examining the said invalidation based on the granted version of the disputed patent. As for the appellant’s claim of that the said refusal by the defendant unlawfully lacked an advance notice with clear reasons allowing revision of the said correction, the Court noted that the legal requirement of an advance notice was applicable to the pre-grant corrections/amendments instead of post-grant corrections/amendments.

Regarding the patentability of the disputed patent, the Court noted that based on the combinations of the proposed prior art 1~4, the disputed patent could be easily achieved by the person skilled in the art and therefore, lacked inventive step.

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