【Volume 40】The Taiwan Supreme Administrative Court recently overturned the ruling of the Taiwan Intellectual Property Office (IPO) regarding a patent invalidation request filed on the grounds that the patentee is not “the owner of the right to apply for the patent” (without consent of the rightful owner, also known as usurpation). In Largan Precision v. Ability Opto-Electronics, i.e., Taiwan Supreme Administrative Court 2020 No. 325 Judgement, the court opined that “substantial differences” between the claims of the contested patent and the evidence for invalidation should be inspected, including the creative concept, technical means, and effects. The invalidation requester shall not be required to prove that the evidence for invalidation has disclosed all technical features in the claims of the contested patent.

Case Facts

Ability Opto-Electronics co. Ltd. (“Ability Opto-Electronics”) held the utility model patent No. M438469 (“the ‘469 patent”). Largan Precision co. Ltd. (“Largan Precision”) asserted that Ability Opto-Electronics had filed the ‘469 patent with stolen trade secrets owned by Largan Precision and requested for invalidation of the patent on the grounds of usurpation. After the IPO dismissed the case, Largan Precision filed an administrative proceeding with the Taiwan Intellectual Property Court (IP Court), which dismissed the IPO’s decision and declared the patent invalid. Ability Opto-Electronics appealed to the Supreme Administrative Court, which upheld the IP Court’s decision, ruling for Largan Precision and confirming the invalidation.

Opinion of the IP Court and the Supreme Administrative Court

In this case, the IPO first held that the evidence for invalidation, namely the design drawings utilized by Largan Precision before the time of filing of the ‘469 patent (Drawings), does not disclose all technical features in Claims 1 and 4 of the patent. The IPO thus decided that the Drawings were not sufficient to prove Largan Precision as the entitled person to apply for said patent.

However, both the IP Court and the Supreme Administrative Court disagreed with such reasoning. The Courts pointed out that under the condition that the technical content in the claims of the patent and that disclosed in the Drawings are substantially the same, and that the patentee is unable to provide a reasonable creative process for the technical content in the claims, the usurpation of the patent application can be proved. The patent shall then be declared invalid even though the text in the claims or drawings in the specification are not completely identical to the Drawings in form.

The multiple sets of feeding device in Claim 1 of the ‘469 patent are merely simple modifications on the number of feeding devices disclosed in the Drawings, both achieved through the technical means of using a light-shielding sheet block and a feed block, and both serving the purpose of feeding light-shielding sheets. Moreover, the technical feature not disclosed in Claim 4 of the ‘469 patent is a basic function that should naturally present for the feeding mechanism to be implemented. The main technical feature of Claim 4 is therefore the same as the Drawings. Despite the fact that the text in the claims or drawings in the specification are not completely identical in form, it can still be proven that Ability Opto-Electronics is not the entitled person to apply for the patent.