Evolving Standards for “Simple Change” in Taiwan’s Mechanical Patent Cases
Date: 8 August 2025
【Volume 154】
In patent applications within the mechanical field, the differences between the claimed patent and prior art often lie in aspects such as the shape, structure, or arrangement of components. Whether such difference is a “simple change” to the prior art, and whether they produce unexpected effects compared with the prior art, these are key considerations in determining whether a mechanical patent involves an inventive step. In a recent invalidation case concerning an invention patent in the mechanical field (Taiwan Intellectual Property and Commercial Court 2023 Xing Zhuan Geng Yi Zi No. 1 Judgment), the Taiwan Intellectual Property and Commercial Court (IPCC, IP Court) reversed its previous opinion1 —this is a reversal that applicants may wish to take note of.
Case Facts
Wu, Shu Mu (an invalidation requester) filed an invalidation action against the invention patent “SINGLE-NOZZLE TIRE VALVE AND DIRECT-PRESS DUAL-VALVE AUTOMATIC SWITCHING TIRE VALVE” (TWI560384, ‘384 patent) owned by BETO ENGINEERING AND MARKETING CO., LTD. (patentee).
After an appeal was filed, Taiwan Supreme Administrative Court revoked and reversed the original judgment of the IPCC. Upon rehearing, the IPCC determined that Claim 3 of ‘384 patent is a simple change to the prior art, and therefore reversed the original judgment, holding that Claim 3 lacks an inventive step (Taiwan Intellectual Property and Commercial Court 2023 Xing Zhuan Geng Yi Zi No. 1 Judgment).
We analyzed the Supreme Administrative Court’s judgment in previously Wisdom News . This article will now present the IPCC’s judgment on the rehearing, along with the reasons for judgment.
The Main Technical Features of ‘384 Patent
‘384 patent provides a single-nozzle tire valve and direct-press dual-valve automatic switching tire valve. The technical features in Claim 3 include:
[Claim 3]: the single-nozzle tire valve in Claim 1, wherein the outer surface of each holding paw is formed as an arched portion widening radially.
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Figure 8 of ‘384 patent (After connecting the first to-be-aerated nozzle 91) |
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Figure 4 of Exhibit 2 (disconnected from the valve) |
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Figure 5 of Exhibit 2 (connected with the valve) |
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The main issue in this case is whether “the outer surface of each holding paw is formed as an arched portion widening radially” recited in Claim 3 of ‘384 patent is merely a simple change of the Exhibit 2.
Judgment of the Taiwan Intellectual Property and Commercial Court on Rehearing
Upon rehearing, the IPCC reversed its original decision, holding that Claim 3 of the ‘384 patent is merely a simple change to Exhibit 2. The court’s reasoning is as follows:
(1) The ring-shaped clamps 19a and 19b of the bell-shaped element 19 disclosed in Exhibit 2 correspond to the holding paw in ‘384 patent. Although the shape of the bell-shaped element 19 in Exhibit 2 does not exhibit the arched portion as in ‘384 patent, Figure 4 of Exhibit 2 has clearly showed that the outer surface of the bell-shaped element 19 widens radially. Although Wu argued that flanges must be provided at the clamps 19a and 19b of the bell-shaped element 19 in Exhibit 2 to serve as a stroke stop when inserting the valve 2, this only represents one aspect of the bell-shaped element in Exhibit 2. Therefore, a person ordinarily skilled in the art would be motivated to simply change the outer shape of the bell-shaped element 19 in Exhibit 2 into an “arched portion widening radially” in Claim 3 of ‘384 patent.
(2) ‘384 patent described that “the arched portion widening radially” functions to guide and press the nozzle. Meanwhile, Exhibit 2 stated that “upon continuous pressing, the bell-shaped element will enter the chamber 9 gradually and intervene the opening which then pushing the clamp toward the center axis of the bell-shaped element to hold the safety valve tightly.” This indicates that the clamps 19a, 19b of the bell-shaped element 19 in Exhibit 2 also indeed serves the purpose of guiding and pressing the nozzle (i.e., the safety valve) when inflation preparation is completed. Therefore, Claim 3 of ‘384 patent does not offer any particularly advantageous effect.
(3) As stated above, although the clamp 19a of the bell-shaped element 19 in Exhibit 2 does not possess an arched portion structure, this difference can be addressed by simply changing the shape of the slanted step part in Exhibit 2 connecting two structures with different diameters. Moreover, the clamp 19a of the bell-shaped element 19 in Exhibit 2 can also achieve all the functions and effects of the arched portion in Claim 3 of ‘384 patent. Therefore, the court held that Claim 3 of ‘384 patent lacks an inventive step.
Wisdom Analysis and Suggested Strategies
Recently, the court practice has shown a trend of increasingly stringent standards when examining inventive step of mechanical patents, particularly with respect to the recognition of “simple changes” and “motivation of combination.” This tendency has become increasingly unfavorable to patent holders and should be noted with caution.
In this case, although the "arched portion widening radially" in Claim 3 of ‘384 patent does not share an identical shape with a " bell-shaped element 19 with a step-like outer face" of Exhibit 2, the radial diameter of the bell-shaped element 19 in Exhibit 2 also gradually increases outward. The only difference lies in whether the radial diameter increases “in a linear or non-linear manner”. Therefore, the court held that a person ordinarily skilled in the art would have been motivated, in light of the teaching of Exhibit 2, to modify the non-linear radial increase in diameter to a linear one.
Moreover, as the specification of ‘384 patent did not clearly disclose the actual principle behind the "guiding effect," the court also found it difficult to demonstrate the cooperating effect between the arched portion and the holding paw. Consequently, it held that no distinctive effects in terms of clamping function could be established to differentiate Claim 3 of ‘384 patent from Exhibit 2.Therefore, patent holders are advised to draft their patents in greater detail the individual functions of each key component of the claimed invention, as well as the cooperating effects of multiple components. This will provide a more solid basis for distinguishing the invention from prior arts during prosecution or litigation.
[1] Taiwan Intellectual Property and Commercial Court 2021 Xing Zhuan Su Zi No. 31 Judgment
