Criteria of Patent Invalidation
Legal Context
A patent owner files a patent application “Automatic Switcher” to TIPO, which is approved after examination. An invalidation requester files an invalidation application with foreign text evidence which is a Japanese patent application publication disclosing technical features similar to the claims of the patent. Based on the examination, SIPO approved the invalidation request, thus the patent is deemed to be invalidated due to the lack of inventive steps. The patent owner disagrees with the decision made by SIPO, and therefore filed an appeal. The Petitions and Appeals Committee, MOEA rejects the appeal, and the patent owner then files an administrative litigation. While the Intellectual Property Court still rejects the administrative litigation, the patent owner next files another appeal. Eventually, the Supreme Administrative Court approves the appeal, withdraws the original decision, and makes the Intellectual Property Court re-examine the invalidation request. Afterward, the Intellectual Property Court affirms the opinions of the patent owner and cancels the original invalidation decision. However, the invalidation requester still files an appeal to the Supreme Administrative Court.
Facts
According to the approved claims of the patent, claim 1 of the patent recites the technical feature of “one end of each cable is wrapped enclosed by the casing of the main socket body”.
The prior art section of the original specification of the patent and the evidence provided by the invalidation requester do not disclose or teach the technical features of “one end of each cable is wrapped enclosed by the casing of the main socket body” and the advantage of “weather change and falling tolerance” recited by the patent.
As shown by the evidence, the cable disclosed by the evidence is directly inserted into the “box body” and connected with the switching circuit therein. Technically, the feature of being “enclosed” and “inserted” are not identical. Regarding the feature of being “enclosed”, the object is wrapped around and covered, wherein the object is covered to be hidden. As for the feature of being “inserted” into the box body recited by the evidence, the object is meant to be placed into the box body to be connected with the switching circuit.
Decision
Based on the aforementioned facts, the court deems that the combination of the evidence provided for invalidating the patent fails to cause the claims of the patent lacking of inventive steps. The two structural features of the patent and the evidence are not allowed to be seen as being identical according to the text. Furthermore, the feature of being “enclosed” directly or indirectly provides the functions relating to weather change or falling tolerance. Therefore, simply deeming the patent lacking of inventive steps simply by the combination of the recited prior arts and the evidence is presently not justified. However, the case is still under the examination conducted by the Supreme Administrative Court.
Remarks
1.The terms and text recited in the claims shall be explained in view of the specification. Besides the text meaning, the content of the specification shall be considered, especially when the specification specifies the meaning or explanation. If the disputed subject is a conventionally known term without any specified definition provided by the applicant in the specification, it shall be explained according to the common understanding illustrated by the people with ordinary skills in the field.
2.The invalidation requester shall provide a correct translation of the evidence. The main reason that the Supreme Administrative Court withdrawing the decision lies on that the invalidation requester has not provided the translated version of the foreign evidence, causing the disputed fact being difficult to be identified. It is common that an invalidation requester only states the technical feature by his/herself in the invalidation reasons without providing the translated version of the evidence. For avoiding the fragmental content of the features inducing incorrect comparison result and preventing further time-consuming appeal process thereby caused, a partial or complete translation of the evidence shall be provided by the invalidation requester upon filing the invalidation request.
TIPO