Luke Hung
The Supreme Administrative Court rendered the 109-Pan-211 Decision of April 16, 2020 (hereinafter, this “Decision”), holding that an invention cannot be patented if it can be easily accomplished by a person having ordinary skill in the art of the invention based on the prior art prior to the application.
According to the facts underlying this Decision, Appellee A filed an invalidation against Appellant B’s patented invention titled “Fan Structure and Fan Blade Structure Thereof” (hereinafter, the “Patent-in-suit”) with Appellant Intellectual Property Office, which held, as a result of its review, that the Appellee’s invalidation was not established. Dissatisfied, the Plaintiff filed an administrative appeal, which was dismissed by a decision on administrative appeal rendered by the Ministry of Economic Affairs. Still dissatisfied, the Appellee filed a lawsuit with the original trial court to seek a decision to set aside the decision on administrative appeal and the original disposition. After the original trial court rendered a decision to set aside the decision on administrative appeal and the original disposition, Appellant Intellectual Property Office was dissatisfied with the requirement to render a disposition to uphold the invalidation and cancel Claims 1 to 6 of the Patent-in-suit and appealed.
According to the Decision, Article 22, Paragraph 4 of the Patent Law provides that an invention that can be easily accomplished by an ordinary person skilled in the art based on prior art before the application shall not be patented pursuant to the law.
It was further indicated in this Decision that the technical problem for the prior art as described in the specification of the Patent-in-suit is the inability to concurrently achieve the stability of the blade structure and enhance the performance of fans. Therefore, the purpose of this invention is to solve the structural design problem of insufficient air inlet areas of fans and to strengthen the blade structure. The technical means employed are to ensure that the blades and the base are completely coupled to enhance the structure of the fans and provide larger air inlet areas. The drawing in Exhibit 2 produced by the Appellant shows that there had been a design identical to that of the Patent-in-suit to directly align the blades on the base. Therefore, this shows that this invention is a reasonable method that a person having ordinary skill in the art can adopt. Moreover, the specification of the Patent-in-suit does not indicate the efficacy when the topmost surface of the bottom portion of a blade is higher than the base to contribute to the unexpected efficacy provided by the technical feature relative to the prior art. Therefore, the technical feature in Claim 1 of the Patent-in-suit can be easily accomplished by people having ordinary skill in the art. As to whether lowering the sleeve plane of Exhibit 2 will affect the stability of shaft rotation, this is only a functional trade-off between shaft stability and the size of the air inlet area. Those with ordinary skill in the art will use reasonable solutions such as lowering the sleeve plane, which is not infeasible at all. Therefore, since Exhibit 2 can prove that Claim 1 of the Patent-in-suit does not have inventive steps, the original decision is not erroneous.