The Supreme Administrative Court rendered the 108-Pan-446 Decision of September 20, 2019 (hereinafter, the “Decision”), holding that the so-called “availability to the public” concerning prior art during the examination of inventive steps means that a prior art reference has been disclosed with its technical details in such a state that they become available to the public, and it is not required that the technical details have actually been known to the public.
According to the facts underlying this Decision, when the Appellant applied to the Appellee for a utility model patent, the patent was granted and published with a patent certificate issued (hereinafter, the “Patent-in-suit”) after the Appellee’s formal examination. The Intervenor subsequently filed an invalidation against the Patent-in-suit for its violation of Article 120 (to which Article 22, Paragraph 2 and Article 26, Paragraph 2 apply mutatis mutandis) of the Patent Law, which was amended and promulgated on December 21, 2011 and went into effect on January 1, 2013 (hereinafter, the “Patent Law Effective upon Patent Grant”). Therefore, the Appellant submitted the amended claims of the patent application. The Appellee concluded after its examination that the Patent-in-suit had violated Article 120, to which Article 22, Paragraph 2 applies mutatis mutandis, of Article Patent Law Effective upon Patent Grant and issued a decision on patent invalidation dated February 22, 2017, a disposition which stated “the amendments of November 12, 2014 shall be approved; the invalidation against Claims 6 through 8 was valid and such claims shall be cancelled; and the invalidation against Claims 1 through 5 was rejected” (hereinafter, the “Original Disposition”). Dissatisfied with the portion that “the invalidation against Claims 6 through 8 was valid and such claims shall be cancelled” in the Original Disposition, the Appellant filed an administrative appeal which was subsequently rejected. Still dissatisfied, the Appellant brought an administrative action at the Intellectual Property Court (hereinafter, the “Original Trial Court”), which ex officio ordered the Intervenor to participate in the lawsuit involving the Appellee. After a decision was rendered to reject the administrative lawsuit, the Appellant, who was still dissatisfied, appealed.
According to the Decision, the prior art for the examination of inventive steps refers to all information available to the public before the application. The so-called “availability to the public” means that the prior art has been publicly disclosed and is in such a state that it’s technical details become available to the public, and this is not necessitated by the actual acquisition of the technical details by the public. If the invalidating party asserts, based on several connected pieces of evidence, that the information put forward is prior art which has been publicly disclosed before the application of the Patent-in-suit, the connections between various pieces of evidence should be determined before such fact is determined based on the entirety of the evidence. If the connections between various pieces of evidence are established, such evidence shall not be divided to separately assess the weight or admissibility of each piece of evidence only.
According to this Decision, Evidence 3 and Evidence 13 are the Inteventor’s machine engineering contract and a copy of the machine engineering drawing in the absence of any non-disclosure agreement. The above machines and equipment are large machine tools whose installation was visible to unspecified workers of various vendors in the same job sites. After the installation, there was no specific access control or confidentiality measure after its completion, and the machine tools were also visible to the employees of the facility or unspecified workers of the maintenance vendors. Therefore, the equipment was in such a state that it became known to the public. Therefore, since unspecified workers could observe the above machines and equipment, they were in such a state that they became known to the public. It is sufficient to conclude that before the application date of the Patent-in-suit, the engineering drawings of Evidence 3 and Evidence 13 were publicly disclosed and thus could serve as the prior art of the Patent-in-suit. In addition, the above evidence is also relevant evidence based on the same fundamental facts. The original decision contained detailed arguments concerning the Appellant’s assertion that since such evidence was not connected evidence and was private documents, which cannot serve as the prior of the Patent-in-suit, such evidence should not be admitted. Therefore, the decision was not subject to any circumstance of failure to apply laws and regulations, inappropriate application of laws and regulations or insufficiency of grounds.