Lately, the Intellectual Property and Commerce Court (IPC Court) overturned the Decisions rendered by the Intellectual Property Office and the Board of Appeals in view of the Judge’s different points of view regarding the eligibility of the evidence presented by the plaintiff, the petitioner of an invalidation action.
In an Invalidation Action filed with the IP Office, the petitioner claimed that the design patent at issue lacked novelty or creativeness based on the presented evidence or a combination of the evidence.
The design patent at issue pertains to a roller shutter slat. From the perspective view and the exploded view of the partial components, the roller shutter slat features a "double-groove V-shaped decorative groove" on the front side, and the top and bottom ends of the left and right sides are characterized by a "double-layer overlapping hook," a "single-layer flat edge," and an "inwardly curved hook neck."
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| Drawing 1 |
After a review of the case, the IP Office was of the opinion that exhibit 6, which consisted of photocopies of procurement contracts and engineering drawings entered into between the petitioner, a third-party company, and their cooperative manufacturers, among others dated from 2012 to 2020 constituted private documents not accessible to the public, and thus were inadequate to serve as eligible evidence. Moreover, even if exhibit 6 were deemed eligible, the unclear images thereon rendered it insufficient to prove that the design patent at issue lacked novelty. Additionally, in combination with the other submitted evidence, exhibit 6 likewise was insufficient to prove a lack of novelty, leading to the conclusion of non-establishment of the invalidation action.
The petitioner, disagreeing with the above assessment, filed an appeal with the Board of Appeals. The Board held that the drawings for the canopy door pieces in a contract attached to exhibit 6, with cross-reference to the award announcement from the government's procurement website should be able to prove that they are available for download on the government’s website before the filing date of the design patent at issue, and had evidential capacity. Notwithstanding this, it is difficult to conclude that the other contracts had been publicly available before the filing of the design patent at issue. Since the drawings for the canopy door pieces in the contract alone did not disclose the design patent at issue in terms of outer appearance, the Board consented to the IP Office that the invalidation action is groundless.
The petitioner subsequently filed an administrative litigation with the IPC Court, averring that the architectural detailed drawing for a construction project in exhibit 6 (referred to as drawing 1), alongside the information from the data accessed from the government electronic procurement network and award announcements, could be considered publicly available documents disclosed before the filing date of the design patent at issue, thus having evidentiary capacity against the novelty of the design patent at issue.
The defendant argued that although drawing 1 in evidence 6 shows a door slat, it has only one decorative groove, and besides, while hooks can be seen at the top and bottom ends of the slat, the enlarged partial view is unclear. Therefore, it is not possible to verify whether it has the appearance of a "double-layer overlapping hook," a "single-layer flat edge," not to mention that it seemingly does not have an "inwardly curved hook neck.” As such, the defendant contended that these variations in ornamental features affect the visual appearance of the roller shutter slat and thus do not lead to a likelihood of visual confusion,
The court opined that although the architectural detailed drawings attached to the construction contracts in exhibit 6 are private documents between the government procurement winning contractor and its cooperating manufacturers, the engineering drawings of the hangar door slats submitted by the petitioner originate from the publicly tendered projects' drawings of various government projects. The aforementioned government procurement tender documents are all publicly available for download from the government electronic procurement network, and the announcement dates of these government procurement public tender documents were all earlier than the filing date of the design patent at issue. Thus, the engineering drawings and related tender documents in exhibit 6 should be considered as valid prior art references that possessed evidentiary capacity.
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| main figure of evidence 3 of exhibit 6 |
Accordingly, the court opined that, among the engineering drawings of the hangar door slats within the construction contracts in exhibit 6, evidence 3 revealed the overall contour lines most clearly. Therefore, this engineering drawing shall serve as the basis for comparison with the design patent at issue.
The court further expressed that the subject matter of the design patent at issue, "roller shutter slat," and evidence 3 of exhibit 6, "hangar door slat," have one and the same use and function, rendering them to be identical items. In comparing their respective features, both have common characteristics such as a "V-shaped decorative groove," "double-layer overlapping hook," "single-layer flat edge," and "inwardly curved hook neck." The only differences lie in the number of V-shaped decorative grooves, with the design patent at issue having a double-groove and evidence 3 of exhibit 6 having a single-groove, and a slight difference in the bending angle of the "single-layer flat edge."
Considering that the only difference of the two designs resides in merely the number of grooves, it is difficult to distinguish this difference from the overall front view of the door slat. Additionally, the bending angle of the flat edge within the hook neck occupies a minimal visual area and is not easily noticeable. Upon comprehensive observation and assessment, an ordinary consumer, based on his observation and perception when selecting a product, would find it difficult to distinguish the overall appearance of the design patent at issue from that of evidence 3 of exhibit 6 due to the common ornamental features mentioned above. As a consequence, a similar visual impression would implant on ordinary consumers, leading to the finding that the design patent at issue is similar to evidence 3 of exhibit 6 in overall outer appearance. Since both have a similar appearance applied to the same article, evidence 3 of exhibit 6 was capable of proving that the design patent at issue lacked novelty or creativeness.
Upon comparing the overall appearance of the design patent at issue with evidence 3 of Exhibit 6, the court held that the two designs have similar appearance. Even though drawing 1 in exhibit 6 is relatively small and unclear, the images in evidence 3 are clear and sufficient for comparison. Therefore, the defendant's argument is unreasonable and untenable.
From the above case, it can be understood that while procurement engineering contracts signed between the winning contractor and downstream contractors are generally private documents, if the engineering drawings attached to these contracts can be correlated with the drawings of publicly tendered government projects, they should be deemed as eligible evidence. Specifically, if the engineering drawings attached to such contracts originate from publicly tendered government projects and the announcement dates of these government procurement public tender documents are earlier than the filing date of a contested patent, these tender documents and their engineering drawings can be considered as possessing evidentiary capacity.
Therefore, in situations like the present case, when using procurement contracts related to government public tender documents as evidence in an invalidation case, it is important to scrutinize and evaluate how these tender documents can supplement any evidentiary deficiencies. This approach will help ensure the most appropriate and effective use of evidence.