As stipulated in Article 22, Paragraph 1, Subparagraph 2 of the Taiwan Patent Act, if an invention is publicly exploited prior to the filing of its patent application, it will not have novelty and will be unable to patent. In patent invalidation practice, it is commonly seen that the invalidation requester presents physical products exploiting the technology content of the patent-in-litigation as evidence of "public exploitation." Due to the physical product’s usual lack of mark of date, the invalidation requester has to present relevant evidence to convince the competent authority or courts that the physical product was indeed publicly circulated on the market prior to the filing date (or the priority date) of the patent-in-litigation application. At this time, the severity of examination by the competent authority or courts may become one of the keys to the recognition of such physical product as the evidence of "public exploitation."
In the 2018 Xing Zhuan Su Zi No. 63 administrative judgment of the Intellectual Property Court on June 12, 2019, it can be seen that the recognition criteria adopted by the competent authority and courts were different.
In this case, the invalidation requester filed an invalidation against a utility model patent, wherein the evidence included one item of sports underwear (Evidence 3) and several blog articles (Evidence 2) publicly known prior to the filing of the patent application; the invalidation requester advocated that the photos and videos published in Evidence 2 showed that the blog articles depicting the user experience were published after the user purchased or received the sports underwear of Evidence 3. If we further compare the sports underwear with the patent-in-litigation, we can find that they both share the same structural characteristics, such that the patent-in-litigation is believed to be indeed publicly exploited prior to the filing of its patent application. After comparing the content shown in Evidence 2 with the physical product sample in Evidence 3, the Intellectual Property Office (IPO) considered that both of the said items of evidence were of the identical brand, with consistent appearance of color, features, and structure. Therefore, the IPO accepted Evidence 3 to prove that the patent-in-litigation was not novel, and granted establishment of the invalidation. In the subsequent administrative appeal decision by the Ministry of Economy, the invalidation decision was also maintained.
Nevertheless, the Intelligent Property Court took a completely different position. In its judgment, it said: "When the interventor presented Evidence 3, it did not include evidence concerning when Evidence 3 was obtained, but considered Evidence 3 was exactly a physical product sample of the said sports underwear mentioned in the web pages, postings and videos of Evidence 2, which was also recognized by the original administrative disposition and appeal decision; however, as Evidence 3 is a physical product sample, and Evidence 2 only presents the appearance of the goods by photos and videos, but does not analyze the internal structure of the goods, both are at most regarded as of the same brand, and with identical appearance and color features, but there is no basis for the inference that they are of "the 'consistent structure'…. Evidence 3 and the combination of Evidence 2 and 3 are therefore not naturally used to prove that the claims 1, 3-6 of the patent-in-litigation are not novel."
In this case, the Intellectual Property Court seemed to adopt stricter requirements on the degree of proof of "public exploitation". As a result, when formulating an invalidation strategy, the invalidation requestors are advised to pay more attention to it.