A & Finet International Patent & Law Office Taiwan R.O.C.

Lack of Inventive Step Cannot Be Based On Technology from Other Field

Posted by: A & Finet International Patent & Law Office
Practice Area: Patent    Country: Taiwan R.O.C.    Publish Date: 01-Sep-2009

On April 12, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the filed opposition against patent application no. 090218224 with the title of “Structure for Modular Moveable Ratchet Wrench” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. Regarding the said decisions by the TIPO and the Committee of Appeal were based on the reason of lack of inventive step, the Court noted that even though the concept of “touch recognition” could be found in the prior art of Braille system, the Braille system and the opposed patent application were in unrelated fields of technologies. In addition, the Court provided that since the potential for modification was narrow within the technology domain of the opposed patent application, the examination standards of inventive step should be looser to encourage the modifications of inventions.

The Court further noted that according to the Examination Standards of Inventive Step published by the defendant, the combination of technologies from different fields shall not be obvious. As the opposed patent application applied the technology from prior art in other technology field and achieved unexpected effect and function, the inventive step of the opposed patent should be recognized. The Court also examined the defendant’s arguments of that 1) based on the three prior arts proposed by the opponent, the method of “touch recognition” through uneven surface of the wrench design employed by the opposed patent application could be easily accomplished by a person skilled in the art, and 2) the concept of “touch recognition” based on uneven surface was already disclosed by the Braille system; and provided the following statement,

  1. The three said prior arts proposed by the opponent did not provide the effects of allowing the wrench to work in dark environments or slim and long tunnels with narrow openings as indicated in the opposed patent application.
  2. The concept of “touch recognition” disclosed by the Braille system was in the field of technology different from that of the opposed patent application.

Based on the reasons listed above, the Court ordered to invalidate the TIPO’s and the Committee of Appeal’s decisions and requested the filed opposition to be re-examined.

Organized and translated by Akina Pan
International Affairs

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