Success in Patent Administrative Litigation

Administrative Litigation Case No. 104-85 regarding Taiwan Utility Model Opposition Application No. 98215474N01 entitled “Improved manhole cover structure”

The patentability requirements associated with the case:

fictitious novelty

The patent-in-suit:Taiwanese Utility Model Patent entitled “Improved manhole cover structure”

The statute associated with the case:Article 95 of Taiwan Patent Act. (Promulgated on Feb. 6, 2003 and became effective on July 1, 2004)

[The synopsis of the Decision]

The claim 1 of the patent-in-suit is different from the Evidence #2 by that the flange of the patent-in-suit is extended from the loading portion, and the latch of the Evidence #2 is mounted on the inner wall of the circumferential rims of the manhole cover. The flange of the patent-in-suit and the latch of the Evidence #2 are different in terms of structure and mounting location, and the respective structure used for engaging therewith. Hence, the flange of the patent-in-suit is not a technical feature that can be directly substituted by the latch disclosed in the Evidence #2. Therefore, the Evidence #2 does not disclose the technical feature of “the loading portion includes two flanges extending therefrom” recited in claim 1 of the patent-in-suit. The Evidence #2 is not sufficient to prove that claims 1-5 of the patent-in-suit violates the fictitious novelty requirement enacted in Article 95 of the Taiwan Patent Act.

1.    Background of the case

(1) Legal Proceedings: The plaintiff (the patent owner) filed a Taiwan utility model application for an invention entitled “Improved manhole cover structure” with Taiwan Intellectual Property Office (TIPO) on Aug. 21, 2009, with a filing No. 98215474. TIPO conducted a formality examination to this utility model application and granted letter patents for this application with a Patent No. M375090 (hereinafter “the patent-in-suit). The participant (The opposing party) filed an opposition application requesting TIPO to invalidate the patent-in-suit with an opposition application No. 98215474N01, as the patent-in-suit violated Article 95 of the Taiwan Patent Act. TIPO issued a decision on Feb, 11, 2015. In the decision, TIPO invalidated all of the claims 1-5 of the patent-in-suit. The plaintiff disavowed the decision of TIPO and appealed TIPO’s decision to the Appeal Board of Ministry of Economic Affairs (hereinafter MOEA). The Appeal Board of MOEA affirmed TIPO’s decision and dismissed the appeal. The plaintiff then filed a lawsuit with the Taiwan Intellectual Property Court (hereinafter Taiwan IP Court). The Taiwan IP Court found that the Evidence #2 submitted by the defendant is not sufficient to prove that claims 1-5 of the patent-in-suit lacks the fictitious novelty under Article 95 of the Taiwan Patent Act of 2003, and thus vacated the Decision of the Appeal Board of MOEA and TIPO.

(2) The claim 1 of the patent-in-suit is as follows: An improved manhole cover structure, comprising: a base adapted to be installed underground beneath a road, wherein the base has a manhole, and a loading portion mounted on top of the base and having two flanges extending therefrom; and a cover having two inserting portions, each of which has a continuous bent section that is respectively corresponding to a flange; wherein the cover is configured to cap on the loading portion of the base such that the flange is able to slide along the continuous bent section and is securely engaged and fastened with the inserting portions. (See the Figure 1 below)

(3) Main Evidence cited in the opposition application: The opposing party cited the Evidence #2 in the opposition application to invalidate the patent-in-suit. The Evidence #2 is a published Taiwan Utility Model Patent entitled “Latch-type manhole cover structure”, which was filed on July 23, 2009 and published on Dec. 1, 2009 with a filing No. 98213531. (See Figure 2 below)

(4) The Taiwan IP Court vacated the TIPO’s decision for the reason stated below: The loading portion of the patent-in-suit corresponds to the stepped surface of the Evidence 2, instead of corresponding to the circumferential rim. The flange of the patent-in-suit is extended from the loading portion, whereas the latch of the Evidence #2 is mounted on the inner wall of the circumferential rim. The flange and the latch are different in structure and are disposed at different locations. Thus, the flange and the latch are not mutually interchangeable. As a result, the Evidence #2 does not disclose the technical feature of “the loading portion includes two flanges extending therefrom” recited in claim 1 of the patent-in-suit.

2.     The main issues and analysis

(1) The main issue: Is the Evidence #2 sufficient to prove that the claim 1 of the patent-in-suit lacks fictitious novelty?

(2) In TIPO’s decision, TIPO found that: the claim 1 of the patent-in-suit can be construed to include 3 features, namely, “An improved manhole cover structure, comprising: a base adapted to be installed underground beneath a road, wherein the base has a manhole, and a loading portion mounted on top of the base and having two flanges extending therefrom;”, “and a cover having two inserting portions, each of which has a continuous bent section that is respectively corresponding to a flange;”, and “wherein the cover is configured to cap on the loading portion of the base such that the flange is able to slide along the continuous bent section and securely engage and fasten with the inserting portions.”. TIPO considered that all 3 features recited in claim 1 of the patent-in-suit have been disclosed in the Evidence #2, which teaches a latch-type manhole cover structure including: a base having an annular shape and a through hole formed in the center thereof and protruding circumferential rims disposed around the circumference of the through hole, wherein an inner wall of the circumferential rims includes latch holes mounted thereon with latches mounted in the latch holes, the heads of the latches are protruded from the latch holes, and a stepped surface is located in the inner diameter of the circumferential rim.” Also, the Evidence #2 teaches that the cover is configured as a disc body having inlayed slots around the circumference of the disc body. The Evidence #2 further teaches that during combination, the inlayed slots align with the head of the latches and engage with the latches. As a result, the Evidence #2 exhaustively discloses all of the technical features of the claim 1 of the patent-in-suit, and thus the patent-in-suit should be invalid due to lack of fictitious novelty.

(3) Taiwan IP Court found that: the base, through-hole, stepped-surfaces, and latch of the Evidence #2 are respectively corresponding to the base, manhole, loading portion, and flanges of the patent-in-suit. However, the technical of “the loading portion includes two flanges” recited in the claim 1 of the patent-in-suit is different from the technical feature of “wherein an inner wall of the circumferential rims includes latch holes mounted thereon with latches mounted in the latch holes, the heads of the latches are protruded from the latch holes” of the Evidence #2. It is to be noted that the loading portion of the patent-in-suit should correspond to the stepped surface of the Evidence #2, instead of corresponding to the circumferential rims of the Evidence #2. As the flanges of the patent-in-suit is configured to extend from the loading portions and the latches of the Evidence #2 is mounted in the inner wall of the circumferential rim, the flange of the patent-in-suit is disposed at different location with the latch of the Evidence #2, and the structure for engaging therewith are different. Hence, the Evidence #2 does not disclose the feature of “the loading portion includes two flanges extending therefrom” recited in claim 1 of the patent-in-suit.

(4) Analysis: TIPO’s decision equals “the flanges extending from the loading portion” of claim 1 of the patent-in-suit with the “latches extending from the circumferential rim” of the Evidence #2, by mistakenly recognizing that the loading portion of the patent-in-suit corresponds to the stepped surface instead of the circumferential rim of the Evidence #2.

3. Conclusion:

  (1) The construction and appreciation of an article claim:

      The article claim is directed to a 3-D real object and is usually defined by its technical features including elements, detailed structure, connection relationship, and materials. To recognize the invention as defined in the claims of the patent-in-suit, one has to understand the function and operation recited in the technical features in the claim, so as to comprehend how a person having ordinary skills in the art realize can achieve the performance of the invention as described in the specification.

  (2) The comparison between the patent and the evidence:

      To determine whether a patent possesses patentability requirements such as novelty and inventive steps, one has to find out the technical features of the evidence that are equivalent to the invention based on the construction and appreciation of the claims of the patent, instead of finding technical features of the evidence that have the same textual meaning as the corresponding technical feature recited in the claims of the patent.

    [Figure 1]

[Figure 2]