The value of an invention in business does not have necessary relationship with the result of patent examination

Yu-Li Tsai, Patent Attorney

ˇ˝ Bachelor of EE from National Taiwan University

ˇ˝ Master of Telecommunications from National Taiwan University

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In an administrative action case decided by the first instance of Intellectual Property Court (IPC), the complainant initiate an invalidation proceeding against an patent on the grounds of not having industrial applicability, novelty, and non-obviousness, but the defendant (TIPO) examined and decided that the invalidation grounds are not established.  The complainant appealed the decision before Board of Appeal (BOA), but rejected again by BOA.  The complainant was still not satisfied and initiated the administrative litigation case before the IPC.  The IPC rejected the complainantˇ¦s claims.

The complainant claimed that the subject matter of the patent at issued has low gene transfer efficiency (1%~4%) and extremely high toxicity (higher than 90%), is impossible to have business value, can never have industrial applicability, etc.

For the issue above, IPC decided and noted:

The object of the patent is to encourage, protect, and utilize the invention and creation to facilitate the industrial development, which is the legislative purpose revealed by Article 1 of Patent Act promulgated on February 6, 2003, and thus, the objects of patent examination to confirm whether the claimed invention is worth patent protection.  The importance of the examination lies in examining whether the claimed invention meets the patentability requirements of industrial applicability, novelty, and non-obviousness, etc (referring to Article 22 of Patent Act promulgated on February 6, 2003), and examining whether the invention description is clearly and sufficiently disclosed so that the person skilled in the technical field of the invention can realize its content and implement the invention according thereto, and examining whether the claims clearly recite the claimed invention, whether each claim recites in a concise manner and is supported by the invention description and drawing(s) (referring to Paragraphs 2-3 of Article 22 of the same act).  As to whether the patentee would implement the patent after grant and sell the products on the market, how the effect of the products is, what the safety or side effect is, and whether the products can make profits accordingly are not the objects of patent examination and also not the necessary items of patent examination.  The claimed invention only needs to meet the requirements of Patent Act to have value of protection to obtain a grant of patent, and whether the invention can necessarily sell on the market and whether the products or process implemented according to the patent has high or low business value have no necessary relationship with the patent examination.  Otherwise, if the applicant must file a patent application only after making studies on all the side effects of the invention, it will put too heavy burden on the applicant and increase his/her costs or delay the earlier timing to file the patent application, and depart from the Patent Actˇ¦s original purposes of encouraging research and creation.

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