Date: 5 May 2023

【Volume 109】

When determining an inventive step, TIPO often cites the theory of “simple change” and uses the argument that “a person ordinarily skilled in the art can accomplish the claimed invention through simply modifying, replacing, omitting, or converting the distinguishing technical feature of the single citation based on common general knowledge at the time of filing”, especially when the examiner cites single reference to negate inventive step. However, this often attracts criticisms that TIPO has abused the "simple change" theory. Recently, Taiwan Intellectual Property and Commercial Court indicated that the argument about "simple change" of TIPO and the previous trial may be considered as hindsight in the judgment of a remanded case (2020 XingZhuanGeng(1)Zi No. 2 Judgment) about invalidation of a utility model patent “FAN AND FAN FRAME THEREOF.” The court has corrected the long-standing mistake of abusing the "simple change" theory in TIPO in this judgment and asked TIPO to be more careful when determining an inventive step to further enhance the stability of patent right.

Case Facts

TIPO dismissed the invalidation action for the utility model patent “FAN AND FAN FRAME THEREOF” for notebook computers (TWM445644, ‘644 patent). The applicant of the invalidation action then lodged an administrative appeal after petition. The court revoked the original sanction and the decision of the petition in the judgment and asked TIPO to approve the invalidation and revoke the patent right. Here, we focus on the issue of “whether claim 2 of ‘644 patent be easily accomplished by simple change the disclosure of Exhibit 3 (TWM408924U)”.

The distinguishing technical feature

‘644 patent discloses a fan with vibration-proof members, wherein the technical features of claim 2 include:

A fan (1) includes: a fan frame (10) including: a frame body with at least two positioning ribs (1000a-1000d) , wherein the at least two positioning ribs protrude from a side wall of the frame body and are distributed symmetrically; and at least two vibration-proof members (102a-102d), wherein each of the vibration-proof members has a positioning groove (1020a-1020d) and the positioning rib is capable of being embedded in the positioning groove so as to position the vibration-proof member on the side wall of the frame body; and a fan wheel (12) which is rotatably disposed in the fan frame, wherein the fan frame further includes at least four fixing members (104a-104d). Two first fixing holes are formed on each of the vibration-proof member. Two second fixing holes are formed on the both sides of each of the positioning rib. Each of the fixing member inserts through one of the first fixing holes and one of the second fixing holes respectively to fix the vibration-proof members on the side wall of the frame body.

Comparison of technical features between claim 2 of ‘644 patent and Exhibit 3:

The distinguishing technical feature between claim 2 of ‘644 patent and Exhibit 3 is the means of fixing the vibration-proof member (vibration absorber), i.e., “fixing by inserting fixing member through vibration-proof members and fixing holes on the frame body” (green) in claim 2 of ‘644 patent and “fixing by combining first slot (23) on the vibration absorber (20) and the protrusion (121) on the frame body” (blue) in Exhibit 3.

【Fig.2 of ‘644 patent】

【Fig.2 of Exhibit 3】

Opinion of TIPO

TIPO considered that the technical feature in claim 2 of ‘644 patent, though not specifically disclosed in Exhibit 3, could be accomplished by simply choosing one of well-known fixing means or well-known materials and failed to generate unexpected effect. Therefore, the invention of claim 2 of ‘644 patent could be easily made by a person ordinarily skilled in the art based on Exhibit 3.

Opinion of Court

The court also considered that Exhibit 3 could prove that claim 2 of ‘644 patent lacks an inventive step in the judgment. However, it was mentioned in the judgment that the argument of TIPO and the previous trial about nonobviousness was inappropriate and may be considered as hindsight, and overestimated the level of ordinary skill in the art. Here are the details of the opinion:

1. Exhibit 3 has disclosed dual fixation and ‘644 patent did not produce unexpected effect compared to Exhibit 3:

Exhibit 3 does not specifically disclose the technical feature “fixing by inserting fixing member through vibration-proof members and fixing holes on the frame body” in claim 2 of ‘644 patent. However, Exhibit 3 has disclosed the technical feature of fixing vibration absorber through combining first slot and second slot and the protrusion and bar on the frame body respectively, which means to combine one fixing means with another fixing means to form dual fixation. This corresponds to the technical feature of using two fixing means disclosed in ‘644 patent. Accordingly, Exhibit 3 has taught the technical feature of dual fixation. Therefore, fixing vibration-proof members to the frame body “again” with fixing members in ‘644 patent is merely a different choice of well-known fixing means. The above technical feature claim 2 of ‘644 patent can be easily made by a person ordinarily skilled in the art based on the technical content disclosed in Exhibit 3 and does not produce unexpected effect. Thus, claim 2 of ‘644 patent lacks an inventive step.

2. The opinion of TIPO and the previous trial did not explain the reason why the dual fixation based on Exhibit 3 can be easily accomplished, which may overestimate the level of ordinary skill in the art:

The further added second fixing technique invention of claim 2 of ‘644 patent is quite different from the first fixing technique of claim 1 of ‘644 patent in terms of methods and approaches. Even though the court also considered that the dual fixation technique in claim 2 of ‘644 patent was a well-known fixing means, the opinion of TIPO and the previous trial did not explain the reason why a person ordinarily skilled in the art can easily accomplish the technical feature of adding another fixing technique to form dual fixation if there is no such disclosure of dual fixation in Exhibit 3, which may be considered as overestimating the level of ordinary skill in the art.