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II. [TW] When “Integrally Formed” Meets Deemed Loss of Novelty: Lessons from a Safety Syringe Patent Dispute
I. Taiwan Supreme Administrative Court Clarifies “Same Design” Standard for Priority Claims in Design Patents
In Tsai v. Intellectual Property Office, No. 113-Shang(上)-Zi(字)-167 (Supreme Admin. Ct. March 4, 2026), the Supreme Administrative Court upheld the original decision, holding that differences in the number of drawings do not, per se, invalidate a priority claim.
This case arose from a design patent for a “vehicle headlamp” filed by Mercedes-Benz Group AG. The patentee claimed priority from a German application; however, the German priority application included only a perspective view and four orthogonal views (front, top, and right-side views), whereas the subsequent application filed in Taiwan included a perspective view and a complete set of six orthogonal views in accordance with Taiwan’s requirements at the time.
The petitioner argued that because the Taiwan application revealed more views than the German priority case, they were not the “same design” under the Patent Act, and thus the priority claim should be denied.
The Supreme Administrative Court rejected this formalistic approach. The Court clarified that the “same design” requirement for priority does not demand that the drawings and text be identical in every formal detail. Instead, the analysis must turn on whether a person having ordinary skill in the art (PHOSITA) would conclude that the overall visual impression is the same after comparing the subsequent application’s drawings with the full content of the priority document.
The Court noted that as long as the essential design features are sufficiently disclosed in the priority case, the inclusion of additional views in the later application—especially those required by local regulations (such as six-sided views) that do not alter the overall visual impression—will not defeat a priority claim.
This decision provides important practical flexibility and protection for international applicants who must accommodate differing drawing requirements across jurisdictions.
References
Chun-Wei Lo
Patent and Trademark Counselor of RichIP Group
II. When “Integrally Formed” Meets Deemed Loss of Novelty: Lessons from a Safety Syringe Patent Dispute
In IP Administrative Judgment No. 34 of 2025, the Intellectual Property and Commercial Court of Taiwan addressed an invalidation dispute involving a patent directed to a safety syringe and needle hub. The court first restated the basic concept of secret prior art novelty: if a claimed invention is identical to the content disclosed in an earlier-filed but later-published patent application, the invention is not patentable. The term “identical” does not refer only to literal identity, but also covers differences that are merely in the form of expression or technical features that can be directly substituted based on common general knowledge in the relevant art.
In this case, the claims actually disputed by the parties (the plaintiff/patentee and the defendant, the Taiwan Intellectual Property Office) were Claims 1, 3, 4, and 7. With respect to disputed Claim 1, the patentee argued that the integrally formed / integrally connected design of the hub body and latch portion provided greater safety and stability than the separable structure disclosed in Evidence 1, in which an adapter was fitted onto the needle seat, and also reduced the risk of detachment and liquid leakage during removal. The court was not persuaded. It held that, in assessing secret prior art novelty, there is no need to compare whether the substituted overall technical means produces different effects; as long as the differing feature is one that can be directly substituted based on common general knowledge, the two disclosures may still be regarded as identical in substance. Accordingly, because both the separable structure in Evidence 1 and the integrally formed structure of disputed Claim 1 served the function of positioning the safety sleeve, the court concluded that changing the separable fitted structure of Evidence 1 into an integrally formed / integrally connected structure was merely a direct substitution based on common general knowledge. Disputed Claim 1 therefore lacked secret prior art novelty.
As to the remaining disputed claims, the court likewise rejected the patentee’s arguments. For disputed Claim 3, the court found that the feature of “the first end portion pressing against the latch portion” was not substantively different from the “interlocking engagement between the first annular rib and the elastic wing” in Evidence 1. For disputed Claim 4, the court held that the claimed “blocks” and “thinned sections” corresponded to the large ring portion and elastic wings in Evidence 1, and that the differences were merely formal or linguistic. For disputed Claim 7, the court similarly concluded that the integrally connected structure and thinned-section features either constituted direct substitutions based on common general knowledge or reflected only formal differences, while remaining substantively the same as the disclosure of Evidence 1. On that basis, the court found that Evidence 1 was sufficient to show that disputed Claims 1, 3, 4, and 7 all lacked secret prior art novelty, and none of the plaintiff’s arguments was accepted.
This judgment offers an important practical reminder for patent prosecution and patent disputes. If an applicant wishes to include, and later rely on, a particular feature as a meaningful distinction over the prior art, such as the “integrally formed” feature in this case, it is advisable not only to define that feature properly in the claims, but also to explain clearly in the specification the concrete technical effects brought about by that configuration. Otherwise, if the feature merely changes an existing multi-part structure into an integral one, and there is no objective evidence showing a technical significance beyond a direct substitution based on common general knowledge, that difference may still be insufficient to avoid a finding of lack of secret prior art novelty
References
Frank Tseng
Patent Counselor of RichIP Group
III. Is “Direct Substitution” a Criterion for Determining “Lack of Novelty based on Legal Fiction”? —2025 Judgment of the Taiwan Supreme Administrative Court
This case involves an invalidation action against a utility model patent titled “Cover of mushroom cultivation bag” (hereinafter the “disputed patent”). The invalidation petitioner cited Evidence 2 to argue that the disputed patent violated the provision of “lack of novelty based on legal fiction” under Article 23 as applied mutatis mutandis by Article 120 of the Taiwan Patent Act. The Taiwan Intellectual Property Office (the appellee) rendered a decision to revoke the patent.
Dissatisfied with the decision, the patentee (the appellant) filed an administrative appeal and a subsequent administrative lawsuit, both of which were dismissed by the Taiwan Intellectual Property and Commercial Court (hereinafter the “IPCC”). Unsatisfied with the decision, the patentee pursued administrative remedies and, after being dismissed by the Taiwan Intellectual Property and Commercial Court (IPCC), appealed to the Taiwan Supreme Administrative Court.
“Lack of novelty based on legal fiction” stipulates that: “Where a utility model claimed in a patent application for utility model is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, a utility model patent shall not be granted.”
In this administrative litigation, the primary focus was on whether the “through-hole 211” disclosed in Evidence 2 could be directly substituted with Special Technical Feature A of Claim 1 of the disputed patent (i.e., “the edge of the vent hole is connected to the bottom wall”), and whether the “covering or buckling” disclosed in Evidence 2 could be directly substituted with Special Technical Feature C of Claim 7 (i.e., “the breathable sheet is fixed to the joint surface by gluing”).
The Taiwan Supreme Administrative Court cited the Patent Examination Guidelines regarding the “Criteria for Determination of Lack of Novelty based on Legal Fiction” (refer to Part 2, Chapter 3, Section 2.6.4 of the Patent Examination Guidelines). That is, “identical content” of lack of novelty based on legal fiction means: (1) totally identical, (2) the difference only lies in the literal descriptions or in the technical features which can be directly or unambiguously deduced, (3) the difference resides in the generic and specific concepts of the corresponding technical features, and (4) the difference lies only in the technical features which can be directly substituted based on common general knowledge.
The Taiwan Supreme Administrative Court pointed out that Taiwan adopts the “enlarged novelty” approach for determining “lack of novelty based on legal fiction”, which differs from the concept of “inventive step”. Specifically, the determination criteria for lack of novelty based on legal fiction encompass the four situations (1) to (4) mentioned above, and “direct substitution” evaluates whether the “technical feature itself” has the same function before and after substitution, rather than considering whether the “overall technical means” produces the same function.
Furthermore, the Taiwan Supreme Administrative Court provided an explanation regarding the “person having ordinary skill in the art” (hereinafter “PHOSITA”). PHOSITA is a hypothetical person, and their technical capability must be substantiated through external evidence. In patent litigation practice, the technical classification of the patent and the level of technology at the time of patent filing can both serve as reference materials for determining the capability of this hypothetical person.
In conclusion, the Taiwan Supreme Administrative Court determined that a PHOSITA, based on the common general knowledge at the time of filing, could directly substitute the “through-hole 211” and “covering or buckling” of Evidence 2 with the Special Technical Feature A and C of the disputed patent, and that the IPCC’s determination of the technical level of a PHOSITA was without violation of the law, thereby rendering a judgment of “appeal dismissed. Therefore, in this judgment, the Taiwan Supreme Administrative Court established that “direct substitution” is a criterion for determining “lack of novelty based on legal fiction” and clarified the rules for determining a PHOSITA and their technical level.
References
Jason Hung
Patent Attorney of RichIP Group