Challenging the validity of patent rights is an effective countermeasure that a person may take when encountering a threat to his commercial activity from a patent owner, which is especially true when the patent right is a utility model patent subject to registration without substantive examination. In accordance with Taiwan’s Patent Act, to file an invalidation action, the petitioner may, among others, submit evidence proving that the challenged invention or utility model had been publicly disclosed prior to filing.
A utility model patent calling for an improved multifunctional sports bra structure was recently the subject of dispute in an invalidation action filed with the Taiwan Intellectual Property Office (hereinafter referred to as "TIPO"). The petitioner submitted as evidence a blog article and YouTube video relating to a sports bra (hereinafter referred to as Exhibit 2), both being notarized to establish that the date the claimed sports bra was publicly disclosed is earlier than the filing date of the utility model patent in dispute. Further submitted by the petitioner was a sports bra sample affixed with a brand name label (hereinafter referred to as Exhibit 3) in an attempt to prove that the sample bra which has disclosed the structural feature of the utility model patent in dispute is exactly the same as the bras disclosed in Exhibit 2. The petitioner thus claimed that Exhibits 2 and 3, when being cross-referenced, are capable of defeating the novelty of the utility model patent in dispute.
Upon a perusal, the TIPO found that the bras at issue are the same brand and are in possession of common characteristics in terms of external appearance, color scheme, technical features, and structure. As the posting dates of Exhibit 2 were earlier than the filing date of the utility model patent in dispute, the TIPO came to the conclusion that the claimed bra had been publicly disclosed prior to the filing date and thus the utility model patent shall be canceled.
The patentee, being dissatisfied with the decision, appealed the case to the Board of Appeals which maintained the decision rendered by the TIPO, and in turn, the IP Court. The IP Court, in an unexpected turn, took an entirely different position.
The IP Court opined that it is necessary to more deeply delve into the bras disclosed in Exhibit 2 to determine whether they are exactly the same as the sample bra and the validity of the utility model patent in dispute hinges upon whether or not the key structural features of the bra defined in the claims, including “an integrally formed, double-layered knitted fabric,” “a base layer having a low stretchability,” “an outer layer having a high stretchability,” and “an triangular knitting having no stretchability,” can be found in Exhibits 2 and 3. If not, there would be no grounds for the petitioner to claim that the bra claimed in the utility model patent in dispute had been publicly disclosed prior to the filing date.
While the IP Court agreed that the sample bra and the bra disclosed in the blog and video are the same brand and have common outer appearance and design, it pointed out that no analysis was presented by the petitioner to prove that they are the same in terms of internal structure. Further, the TIPO’s finding that the bras disclosed in Exhibit 2 and 3 are the same was deemed by the IP Court as premature since the structural feature of the bra defined in the claims of the utility model patent in dispute cannot be discerned and appreciated from the images shown in Exhibit 2 or from the sample bra. Accordingly, Exhibits 2 and 3, even when being cross-referenced, failed to prove that the bra disclosed in the Exhibit 2 and the sample bra are one and the same and thus the evidential materials, in combination, are not sufficient to defeat the novelty of the utility model patent in dispute. As to Exhibit 3 which neither bears a date nor is accompanied by a voucher showing the date the sample bra was purchased, it, by itself, is not capable of defeating the novelty of the utility model patent in dispute.
As a result, the IP Court revoked the Decision rendered by the TIPO and held that the validity of the utility model patent shall be maintained.
During invalidation proceedings, it is not uncommon for a petitioner to submit physical samples as evidence to prove that a challenged invention had been publicly disclosed prior to the filing date. In such scenario, the petitioner must have in mind that a sample alone is not able to establish the date of /manufacturing or purchase if it is not accompanied by auxiliary evidence (such as a receipt, export declaration, website information or witness testimony) proving that the product had been circulated in the marketplace before the filing date of the patent in dispute. Moreover, when it is necessary to submit website information, such as images/videos, as auxiliary evidence to make success of an invalidation case, apart from the brand name and outer appearance, at least some of the structural features of the product defined in the claims of the patent in dispute should be revealed in such website information.