Lack of novelty and lack of an inventive step are different reasons for patent invalidation. So, new evidence does not need to be considered and examined.
Fact
The Intervening party (patentee of the Utility Model patent) filed a utility model patent application up to the Defendant (TIPO), and was granted through formality examination. The Plaintiff (Invalidation requester) filed an invalidation action against the granted Utility Model patent based on the grounds that it did not conform to the Article 94(IV) of former Patent Act, in effect at the time of the said Utility Model patent being approved, which was revised and published on August 25, 2010 and enforced on September 12, 2010. After examined by the Defendant, it rejected the petition of invalidation against Claims 1 and 2 of the Utility Model patent. The Plaintiff then applied an appeal up to the MOEA but was also rejected. Then, the Plaintiff filed an administrative litigation up to the IP Court. After being judged by the IP court, the petition was still turned down.
IP Court’s viewpoint
The Plaintiff brings up evidence 3~7 as new evidence in the administrative litigation to prove that the Utility Model patent lacks of novelty. The IP court deems that it is not necessary to investigate and examine whether the evidence 3~7 can prove the Utility Model patent lacks novelty or not and indicates the matters below in the judgment:
New evidence will be taken into account only when it is submitted for the same ground in the invalidation action:
According to Article 33 of the Intellectual Property Case Adjudication Act, 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 competent intellectual property authority shall provide written briefs in response to the new evidence in the preceding paragraph, indicating whether arguments provided by the opposing party concerning such new evidence have merit. .
Although the Plaintiff claims that the evidence 3~7 can prove the lack of novelty of the granted Utility Model patent, the Defendant argues that even if the new evidence 3~7 is brought up in the administrative litigation process, except that it has not been deliberated during the invalidation action or the appeal, the allegation of lack of novelty in the litigation is not identical ground based on the same fact for revoking. Therefore, the IP court should judge whether the Plaintiff should bring up the evidence 3~7 claiming that the Utility Model patent lacks of novelty in the administrative litigation or not.
Lack of novelty and lack of an inventive step are different reasons for patent revoking:
Although the Plaintiff brought up evidence which is the combination of evidence 2 and 3 as well as the combination of evidence 2 and 4 in the invalidation action and appeal process to show that Claims 1 and 2 of the granted Utility Model patent lack an inventive step, the Plaintiff did not bring up the evidence 3~7 in the administrative remedy processes as evidence of lacking novelty. It is because the lack of novelty is in violation of Article 94(I) of the former Patent Act while the lack of inventive step is in violation of Article 94(IV) of the former Patent Act. The said two unpatentable grounds are different reasons for the administrative litigation regarding revoking patent rights. According to the above, whether the Utility Model patent lacks novelty or not is another reason concerning patent revoking. The Plaintiff cannot bring up with new revoking reason regarding the lack of novelty of the Utility Model patent in the litigation. This is why the IP court does not have to judge whether the evidence 3~7 can prove the Utility Model patent lacks novelty.
Source: TIPO Newsletter published on October 05, 2015
Delivered by: Sandy WANG (Ms.) / Senior Partner
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