Luke Hung
The Supreme Administrative Court rendered the 108-Pan-329 Decision of July 5, 2019 (hereinafter, the “Decision”), holding that the inventive steps of a patent should be examined based on the technical contents disclosed in its citation documents, including contents formally and clearly specified and substantively implied details which are not specified.
According to the facts underlying this Decision, the Appellant applied on April 21, 2015 to the Appellee for a utility patent, which was granted by the Appellee after its formal examination with a patent certificate issued on December 21, 2015 (hereinafter, the “Patent at Issue”). The intervenor subsequently filed an invalidation on February 18, 2016 on the ground that the Patent at Issue violated Article 120 (to which Article 22, Paragraph 2 of the Patent Law applies mutatis mutandis) of the Patent Law amended on December 21, 2011 and coming into force on January 1, 2013. The intervenor applied to amend the patent claims on April 29, 2016, and the amendment was granted by the Appellee after its review via the original disposition. The invalidation of Claims 2 through 8 was granted with such claims invalidated. The invalidation of Claim 1 was rejected. Dissatisfied with parts of the original disposition, the Appellant filed an administrative appeal, which was rejected by a decision. Still dissatisfied, the Appellant brought an administrative action at the Intellectual Property Court (hereinafter, the “Original Trial Court”). After the Original Trial Court asked ex officio the intervenor to independently participate in the lawsuit involving the Appellee and rendered a decision to dismiss the lawsuit, the Appellant was still dissatisfied and appealed.
According to this Decision, the inventive steps should be examined based on the technical contents disclosed in the citation documents, including the contents specifically and formally specified and details not specified but actually implied. The so-called actually implied details refer to details that can be learned directly and invariably by people having ordinary skill in the art relating to the invention by referencing the ordinary knowledge available at the time of application. If a citation document includes a figure which has specifically disclosed technical contents, such citation document is deemed to make such disclosure.
It was further pointed out in the Decision that although the specification produced as evidence did not directly disclose the “air gap” in Claim 2 of the Patent at Issue, still a comparison with the figure in evidence and the figures of the Patent at Issue shows that the portions of Patent at Issue that depict the structural form of the casing and the molding body and their assembly relationship are exactly the same as the heat insulation unit and molding body disclosed in the evidence. After the figure in evidence and the three-dimensional exploded view in the figures of the Patent at Issue are compared, except for the perforations and screw lock holes, the heat insulation units (or the casing units) of the two and the structural form and assembly relationship of the molding bodies are exactly the same. People having ordinary skill in the art associated with the utility patent can directly and invariably learn about their corresponding spatial relationship between the two after they are combined. In this situation, sameness can also be established. Therefore, the gist of the appeal is groundless and unacceptable.