The Intellectual Property Court will not take into account any new evidence supplemented by the TIPO at the stage of appeal or administrative action if the appeal or administrative action is not arisen for a cancellation or revocation of a registered trademark or patent (a written judgment No.172 made by IP Court in 2010)

Article 33 of the Intellectual Property Case Adjudication Act prescribes that in an administrative action concerning cancellation or revocation of a registered trademark or patent, the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of the oral argument.

The “grounds” in Article 33 refers to the grounds for the cancellation or revocation excluding the grounds for patent application. Thus, it means that only new evidence submitted for the cancellation or revocation, but not any other cases, will be considered by the IP Court.

In this case, the TIPO rejected the Plaintiff’s invention patent application (hereinafter “the patent at issue”) because it decided that the proposed invention could be easily accomplished by a person having ordinary knowledge in the art based on one prior art (Citation 1) cited during the examination in the TIPO. Then, the TIPO sustained their unfavorable decision in the re-examination by Citation 1 and a supplementary document, Page 8 of the master thesis published in July 2004 by Department of Mechanical and Marine Engineering, NTOU, but didn’t mention the supplementary document in the written decision of re-examination.

At the Appeal stage, the TIPO further added the following evidence when submitting the response:

1. Pages 2~6 of the master thesis published in June 2004 by Department Of Mechanical Engineering, NCKU;
2. Page 8 of the specification of the invention patent No.405041 published on September 11, 2000;
3. Abstract of the master thesis published in 2005 by Department of Mechanical Engineering, NTU; and
4. Page 8 of the master thesis published in July 2004 by Department of Mechanical and Marine Engineering, NTOU

At the stage of the Administrative action, the TIPO further supplemented pages 515, 522, 523, 560 and 562 of a book named “Machine Design” during the oral argument even though they had confirmed no evidence to be submitted in the preparatory proceeding.

In the TIPO’s opinion, the additional data above depended on the principal evidence, i.e. Citation 1, and were used to strengthen and assure the admissibility and probative value of Citation 1. Thus, the additional data above were not new evidence and should be taken into account in the Administrative action.

However, the IP Court held different point of view. When determining whether an invention has inventive step, it is necessary to take the following factors as a whole into consideration:

1. the technical level of a person having ordinary knowledge in the art;
2. prior arts based on one or more cited references;
3. ordinary knowledge at the moment of filing; and
4. if it can be easily accomplished.

When the TIPO determined that the proposed invention lacked inventive step by combining Citation 1 and the prior arts disclosed in several cited references, it should be regarded as independently “new evidence” but not merely corroborating evidence.

Owing to the fact that the TIPO never informed there were other cited references besides Citation 1 in the office actions and the written decision of re-examination they issued, it certainly should not allow them to add independently “new evidence”, i.e. combination of Citation 1 and the prior arts disclosed in several cited references after the decision made by the TIPO was affirmed. Consequently, the IP Court would not consider the independently new evidence either.