A Utility Model patent related to “mold-proof patch” inTaiwanwas invalidated by a third party by the ground of “in lack of inventive step” according to the Patent Act, Article 94.4. The complainant (patentee) initiated an administrative action up to theIP Courtagainst the decision of the Appeal.
One of the grounds claimed by the complainant was that the success in commerce of the product manufactured in accordance with the Utility Model patent in dispute could prove that the Utility Model patent in dispute was not easy to be accomplished by a person skilled in the art and also prove that the Utility Model patent in dispute met the inventive step requirements. In addition, according to the Examination Guideline, pages 2-3-23 to 2-3-24, about the secondary consideration of “inventive step”, it mentioned that “an invention solving the long-term problems (3.4.2.2)” and “an invention obtaining the success in commerce (3.4.2.4)” were the factors of secondary consideration when judging the inventive step of a patent, which were available evidence to prove that the Utility Model patent in dispute met the inventive step requirements because it not only effectively solved the long-term problem of preventing mold by chemical preparations but also achieved great success in commerce.
As mentioned in the decision of the IP Court, the complainant claimed that the product manufactured in accordance with the Utility Model patent in dispute got very high market share (ranked the 2nd high in the world) by submitting some reports of news media and a CD to prove its success in commerce. However, no matter whether it was true or not, the market share depended on the price of the product, the sales skills and the promotion ways, etc. but did not necessarily rely on the product itself. In addition, the rank of the market share had no direct connection with the judgment of whether the technology characteristics in the claims of the patent met the patentability requirements. Furthermore, the complainant owned some other Utility Model patents related to “mold-proof patch” but the CD was unable to prove the product shown therein was the one manufactured in accordance with the Utility Model patent in dispute. Moreover, there were two kinds of patents involved in the product sold in one package as shown in the CD. It was hard to prove that it was the Utility Model patent in dispute which brought the success in commerce. So, the decision was made that the success in commerce of a product manufactured in accordance with a patent in dispute could not prove that the patent in dispute met the inventive step requirements.
JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES
10-1FL., NO.23, SEC.1, CHANG-AN E. RD.,TAIPEI10441,TAIWAN, R.O.C
http://www.jaw-hwa.com.tw E-mail: wt.moc.awh-waj@awhwaj
Source: TIPO Newsletter issued on July 5, 2012; the administrative decision No. 124 in the IP Court in 2011
http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=6090
