[Taiwan] Determination of Evidence Eligibility on Patent Invalidity Examination by Taiwan’s IP Court - Grace Periods to Exceptions of Loss of Novelty or Inventive step
[ June 13, 2024 ] >Back|
A. Introduction:
The plaintiff filed a utility model patent titled "vehicle-mounted light" with TIPO (hereinafter referred to as the defendant) on September 12, 2019, which the application was granted after conducting the formal examination (hereinafter referred to as the disputed patent). Later, a third party filed an invalidation against the disputed patent in view of the violation of Article 120 of the Patent Act, which applied mutatis mutandis to Article 22, Paragraph 1, Subparagraph 1, and Paragraph 2, concerning novelty and inventive step. The defendant then examined and made the decision that claims 1 to 8 were found to be invalid and should be revoked. The plaintiff was not convinced and filed an appeal but was dismissed, and then filed an administrative lawsuit to the Intellectual Property and Commercial Court, consequently “the final ruling is to revoke both the appeal decision and the original decision”. The details of the Intellectual Property and Commercial Court's decision (Mandarin) can be found via the link at the bottom of this article.
B. Summary of the Intellectual Property and Commercial Court’s Judgment: The disputed patent titled “vehicle-mounted light” is a utility model filed on September 12, 2019. The third party asserted that claims 1 to 8 in the disputed patent lack inventive steps in view of Evidence 2 and the combination of Evidence 2 and 3.
1. Arguments in the Case: a. Is Evidence 2 eligible?
b. Are Annexes 2 to 3 set forth in the invalidation arguments, and Annex 4 set forth in the appeal arguments (i.e., the original Evidence 6) sufficient to prove that the disputed patent is eligible for the grace period, according to Evidence 2? 2. Court’s Opinion: a. Article 120 of the Patent Act, applied mutatis mutandis to Article 22, Paragraphs 1 and 2, states: “A utility model patent may be granted, except for the following: a utility model was disclosed in a printed publication prior to the filing of the patent application; was publicly exploited prior to the filing of the patent application; or was publicly known prior to the filing of the patent application.” These provisions involve the circumstances in which a utility model lacks novelty and inventive steps, respectively. Article 120 of the Patent Act, applied mutatis mutandis to Article 22, Paragraph 3, states: “A disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of a utility model prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within twelve (12) months after the date of the disclosure.” This provision involves exceptions to the aforementioned situations of losing novelty or inventive steps.
b. Evidence 2 is a photo of the product webpage published on the Ruten Auction website on January 6, 2019. This publication date was earlier than the filing date of the disputed patent, i.e., September 12, 2019. However, Annexes 1 and 3 of the invalidation arguments, and Annex 4 of the appeal arguments set forth by the plaintiff, show that Evidence 2 was voluntarily provided by the plaintiff to the auction account "maxawei" (hereinafter referred to as party B) for being public, and party B further requested the Plaintiff to provide products for facilitating sales. Thus, it is sufficient to prove that Evidence 2 is public by the plaintiff’s intention, making it eligible for the grace period and inadmissible to determine the novelty or inventive step of the disputed patent. c. The defendant argued that the signing dates of Annexes 2 and 3 were both after the invalidation was filed, and there were inconsistencies in their names and company numbers, making it difficult to recognize their authenticity. However, the court held that even if the certified documents, such as Annexes 2 and 3 of the invalidation arguments, were signed after the filing date of the disputed patent, both the plaintiff and party B only acted as subsequent confirmation and did not affect the fact that the contract between the two parties had already been established. Furthermore, the fact that the product on the webpage of Evidence 2 has a marked selling price can be regarded as a public offer to unspecified consumers. Under this interpretation, the act of Evidence 2 being public should be considered the plaintiff’s intention, and the disputed patent was filed within 12 months after the act of being public. Therefore, Evidence 2 is eligible for grace periods to exceptions for loss of novelty or inventive step. In other words, Evidence 2 cannot be prior art for determining the novelty or inventive steps of the disputed patent. 3. Court’s Decision:
Annexes 2 to 3 set forth in the invalidation and Annex 4 set forth in the appeal sufficiently prove that the disputed patent is eligible for the grace period to exceptions, according to Evidence 2 (i.e., "product webpage photo posted on January 6, 2019").
C. Conclusion: In addition to being disclosed in the Patent Gazette, if public disclosure meets two requirements “(1) the applicant files for an invention patent or a utility model patent within 12 months after the public disclosure occurs, and (2) the public disclosure is made either intentionally or unintentionally by the applicant” at the same time, the invention is eligible for grace period to exceptions for loss of novelty or inventive step, and the public disclosure cannot be prior art for determining the novelty or inventive steps of the patent.
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