On March 29, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the filed opposition against patent application no. 090120215 with the title of “Transformer for Inverter” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. In the said decision, the Court noted that the scope of technology included in the claims of the opposed patent could not be directly derived from the scope of technology included in the claims of the prior art proposed by the opponent. In addition, the Court provided that whether or not the scope of technology included in the claims of the opposed patent could be derived from the combination of the said prior art and other technology is within the scope of inventive step (instead of novelty), and did not qualify as ground for the examination of the filed opposition.

Based on the comparison between the opposed patent and the said prior art, the Court illustrated that the subject matter of the opposed patent was a “transformer for inverter”, whereas the subject matter of the said prior art was a “retardation coil”. Moreover, the Court provided that the since the subject matters of the opposed patent and the said prior art contained different composing components, effects and functions, the opposed patent and the said prior art could not be regarded as having the same technology.

As for the defendant’s reasons of accepting the said opposition, the Court provided the following analysis,

Based on the reasons above, the Court confirmed that the independent claim 1 and the sub claim 2~18 (dependent on claim 1) of the opposed patent were different from the prior art proposed by the opponent. And the Court further noted that since the independent claim 9 and the sub claim 10 (dependent on claim 9) of the opposed patent employed the technology similar to the said claim 1~8, the opposed patent was different from the prior art proposed by the opponent. Therefore, the Court ordered to invalidate the decisions by the TIPO and the Committee of Appeal.

Organized and translated by Tony Chen
International Affairs