Fact
An invalidation action against the patent at issue was filed for the violation of Patent Act Articles 23, 31.I and 22.IV in effect at the time of the said patent being approved. After examination, TIPO deemed the patent at issue violates Patent Act Article 22.IV (lack of inventive step) and that Claims 1~6 of the patent at issue should be invalidated. The Plaintiff (the patentee of the patent at issue) filed an appeal against TIPO’s decision up to the MOEA, the higher authority of TIPO, but it was dismissed. Then, the Plaintiff filed the administrative litigation up to the IP Court.
The IP court held that though the manufacturing procedures defined in Claim 1 of the patent at issue have not been disclosed by the evidence presented by the invalidation requester, the defined manufacturing procedures are technologies commonly known by people with the general knowledge of the related field at the time of the said patent at issue being applied, as disclosed by two citations whose publication dates or issue dates are both prior to the application date of the patent at issue. Thus, the litigation was dismissed.
The Plaintiff argued against the IP court’s decision and alleged that the court’s judgment should be grounded on evidence presented by the invalidation requester instead of on new citations investigated by the court ex officio.
IP Court’s viewpoints
1.Administrative Court shall investigate the facts ex officio without being bound by the request of the parties.
Based on the Articles 125.I and 133 of Administrative Procedure Law, the administrative court should investigate the evidence to ferret out the truth and has an obligation of elucidation when investigating a case and shall urge the parties to clarify and testify their statement and evidence. Also, the court shall conduct the investigation ex officio in order to elucidate the fact.
2.The judgment regarding inventive step shall be grounded upon whether the invention can be easily achieved by people with the general knowledge of the related technical field through simple modifications, transformations, adaption or combinations of the technical features disclosed in the prior art along with the general knowledge of the related field at the time of the said patent at issue being applied. Thus, the “prior art” defined in the Article 22. IV is not restricted to the evidence presented by the invalidation requester.
Source: TIPO Newsletter published on September 05, 2015
Delivered by: Sandy WANG (Ms.) / Senior Partner
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