2019.1.10
Hsiao-Han Su
The Supreme Administrative Court rendered the 108-Pan-12 Decision of January 10, 2019 (hereinafter, the “Decision”), holding that if an invention whose patent rights have been granted is deemed to be in violation of the Patent Law, evidence may be submitted to the dedicated agency to invalidate the patent; and if the evidence is verified, a disposition that upholds the invalidation should certainly be rendered.
According to the facts underlying this Decision, the Appellant applied to the Appellee for an invention patent on “micro fans.” The application was granted with the patent-in-suit issued. Later, the Intervenor filed an invalidation against the patent-in-suit on March 25, 2016 for its violation of Article 22, Paragraph 4 of the Patent Law. The Appellee subsequently conducted a review before rendering the original disposition which upheld the invalidation and invalidated the patent-in-suit. Dissatisfied, the Appellant brought an administrative action to seek remedies. After the original trial court rendered a decision against the Appellant, the Appellant filed this appeal.
According to this Decision, for an invention whose patent rights have been granted, anyone who believes that the above requirement under the Patent Law is violated may submit evidence to file an invalidation with the dedicated agency. If the evidence submitted by the party filing the invalidation is sufficient to prove that the patent-in-suit violates the Patent Law, a disposition that upholds the invalidation should certainly be rendered.
It was further pointed out in the Decision that with respect to the inventions in Claims 1 and 8 of the patent-in-suit, the technical details set forth in Exhibits 2, 3 and 5 were relevant in terms of functions. When confronted with the problem of reducing the axial height of a motor, people skilled in the art of the invention certainly have motivations to reference the same art and technologies with relevant functions and efficacy and to use them both to achieve the efficacy of reducing structural and assembly complexity and to easily complete the inventions in Claims 1 and 8 of the patent-in-suit. Therefore, the combination of relevant evidence can prove that Claims 1 and 8 of the patent-in-suit do not have inventive steps. Since the original decision upheld the legality of the original disposition and did not find any error in it, the Appellant’s appeal was rejected.