November 2024
Taiwan’s Protection of Procedural Rights in Patent Invalidation
November 2024
Jane Tsai and Vincent Kuo
Patent Invalidation is a system that introduces public assistance in patent examination. It is raised by non-specific individuals, enabling the Intellectual Property Office (hereinafter referred to as the “IPO”) to review whether a published patent meets the patentability requirements. If the patent does not meet such requirements, the IPO will issue a decision to revoke it.
The proceedings of Patent Invalidation involve a tripartite relationship among the petitioner, the patentee, and the IPO. First, the petitioner declares the specific claims for invalidation and presents relevant evidence and corresponding reasons. Then, the patentee makes a defense. Finally, the IPO determines whether the evidence presented by the petitioner is sufficient to prove that the specific claims do not meet patentability requirements. Therefore, during the proceedings of Patent Invalidation, the IPO must ensure that patentees have an opportunity to defend each issue (comprising claims, reasons, and evidence; any difference in these elements constitutes a different issue) to prevent any procedural ambushes. According to Article 75 of the Patent Act, when the IPO considers evidence and reasons not presented by the petitioner, it must notify the patentee to defend within a specified period, which ensures thorough protection of procedural rights.
However, according to the literal interpretation of Article 75 of the Patent Act, the IPO is required to provide the patentee with an opportunity to defend their position only when it initiates an "ex officio examination", i.e., when considering reasons and evidence not presented by the petitioner. In comparison, there is no similar requirement when the IPO considers reasons and evidence already presented by the petitioner. This interpretation may create a loophole for the protection of procedural rights, of which there are two examples:
The following are four relevant cases, followed by an analysis and comparison of the court's positions.
1. 111-Xing-Zhuan-Su-Zi No. 21 Administrative Judgment of the Intellectual Property and Commercial Court
In this case, the petitioner asserted that "the combination of Evidence 2 and 3 discloses the technical features of the disputed patent," whereas the IPO determined that “Evidence 2 alone discloses the technical features of the disputed patent" as the basis for its decision, without providing the patentee an opportunity to defend against that basis, thereby making a decision unfavorable to the patentee. The court held that if the IPO's basis for its decision differed from the reason asserted by the petitioner, it fell into the "ex officio examination" specified by Article 75 of the Patent Act. Consequently, the IPO is legally obligated to provide the patentee with an opportunity to defend within a specified period, and there is no discretion for the IPO in this regard.
2. 111-Xing-Zhuan-Su-Zi No. 56 Administrative Judgment of the Intellectual Property and Commercial Court
The factual background of this case is quite similar to that in the 111-Xing-Zhuan-Su-Zi No.21 Administrative Judgment of the Intellectual Property and Commercial Court, but the outcomes are markedly opposite. The petitioner asserted that "the combination of Evidence 1 with other evidence proves that the technical features of the disputed patent lack non-obviousness" whereas the IPO determined that "Evidence 1 alone proves that the technical features of the disputed patent lack non-obviousness" as the basis for its decision, without providing the patentee with an opportunity to respond, thereby making a decision unfavorable to the patentee. The court held that although the IPO's basis for its decision differed from the reasons asserted by the petitioner, the IPO has only considered evidence presented by the petitioner, making it not fall into the "ex officio examination" specified by Article 75 of the Patent Act. Therefore, it is not legally obligated for the IPO to provide the patentee with an opportunity to defend.
3. 108-Xing-Zhuan-Su-Zi No. 5 Administrative Judgment of the Intellectual Property and Commercial Court
In this case, the patentee first applied to the IPO for an amendment of the disputed patent. Subsequently, the petitioner raised patent invalidation proceedings against it. The IPO then consolidated the amendment application and the invalidation proceedings for examination and issued decisions of "approval of amendment" and "revocation of the amended patent" simultaneously. That is, the IPO directly compared the evidence presented by the petitioner with the newly amended patent and deduced the basis of its decision, which is not the same as the reasons asserted by the petitioner, without providing the patentee with an opportunity to defend before making a decision unfavorable to the patentee. The court held that since the basis for the IPO’s decision was not the same as the reasons asserted by the petitioner, but was deduced by itself, it fell into the "ex officio examination" specified by Article 75 of the Patent Act, which could potentially lead to a procedural ambush on the patentee; therefore, the IPO must provide the patentee with an opportunity to defend.
4. 102-Xing-Zhuan-Su-Zi No. 74 Administrative Judgment of the Intellectual Property and Commercial Court
In this case, the IPO deemed the reasons asserted by the petitioner insufficient and directly quoted other technical content disclosed in the evidence presented by the petitioner as the basis for its decision, which was unfavorable to the patentee. The court held that even if the scope of the IPO’s consideration did not exceed the scope of the evidence presented by the petitioner, once it quoted the technical content not asserted by the petitioner as the basis for its decision, it should provide the patentee an opportunity to defend.
In the 1st and 2nd cases mentioned above, the IPO used a combination of evidence different from that asserted by the petitioner as the basis for its decision, but the court's views on whether this fell into “ex officio examination” were exactly opposite. However, in the 2nd case, the court held that since the patentee had already defended against "whether Evidence 1 combined with other evidence disclosed the technical features of the disputed patent", it had effectively defended against "whether Evidence 1 alone disclosed the technical features of the disputed patent". This means that even if the IPO used the latter as a basis for its decision, it did not lead to a procedural ambush on the patentee. Thus, although the judgement of the 1st and 2nd cases was opposite, they shared a common standard: whether or not the patentee was provided with an opportunity to defend.
In the 3rd and 4th cases, the court upheld the principle of procedural rights protection. The court held that even if the IPO did not consider materials other than the evidence presented by the petitioner, as long as the patentee had no opportunity to preemptively defend against certain technical content or assertions, the IPO must notify it to the defense. This ensures that the patentee always has an opportunity to defend against each piece of evidence and assertion quoted as the basis for the IPO’s decision.
Therefore, in cases where the IPO uses a combination of evidence different from that asserted by the petitioner as the basis for its decision without providing the patentee an opportunity to defend, the court may adopt two opposite positions. However, even if the court considers the procedures adopted by the IPO fully compliant with the law, it does not necessarily lead to a procedural ambush on the patentee. As for cases where the IPO reaches its decision on assertions or evidence that the patentee had no opportunity to preemptively defend against, the court consistently interprets Article 75 of the Patent Act from a procedural rights protection perspective to avoid procedural ambush on the patentee, which is commendable.
The contents of all materials (Content) available on the website belong to and remain with Lee, Tsai & Partners. All rights are reserved by Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors' opinions do not represent the position of Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Lee, Tsai & Partners.
Jane Tsai and Vincent Kuo
Patent Invalidation is a system that introduces public assistance in patent examination. It is raised by non-specific individuals, enabling the Intellectual Property Office (hereinafter referred to as the “IPO”) to review whether a published patent meets the patentability requirements. If the patent does not meet such requirements, the IPO will issue a decision to revoke it.
The proceedings of Patent Invalidation involve a tripartite relationship among the petitioner, the patentee, and the IPO. First, the petitioner declares the specific claims for invalidation and presents relevant evidence and corresponding reasons. Then, the patentee makes a defense. Finally, the IPO determines whether the evidence presented by the petitioner is sufficient to prove that the specific claims do not meet patentability requirements. Therefore, during the proceedings of Patent Invalidation, the IPO must ensure that patentees have an opportunity to defend each issue (comprising claims, reasons, and evidence; any difference in these elements constitutes a different issue) to prevent any procedural ambushes. According to Article 75 of the Patent Act, when the IPO considers evidence and reasons not presented by the petitioner, it must notify the patentee to defend within a specified period, which ensures thorough protection of procedural rights.
However, according to the literal interpretation of Article 75 of the Patent Act, the IPO is required to provide the patentee with an opportunity to defend their position only when it initiates an "ex officio examination", i.e., when considering reasons and evidence not presented by the petitioner. In comparison, there is no similar requirement when the IPO considers reasons and evidence already presented by the petitioner. This interpretation may create a loophole for the protection of procedural rights, of which there are two examples:
- When the petitioner only quotes a portion of the evidence for Patent Invalidation, the patentee is unable to preemptively defend against other parts of the evidence. If the IPO subsequently relies on those other parts as the basis for its decision, it may lead to a procedural ambush on the patentee.
- When the IPO uses a combination of evidence different from that asserted by the petitioner as the basis for its decision, the patentee has not had the opportunity to present an opposing opinion on whether the combination of evidence discloses the specific technical features of the disputed patent. This may also lead to a procedural ambush on the patentee.
The following are four relevant cases, followed by an analysis and comparison of the court's positions.
1. 111-Xing-Zhuan-Su-Zi No. 21 Administrative Judgment of the Intellectual Property and Commercial Court
In this case, the petitioner asserted that "the combination of Evidence 2 and 3 discloses the technical features of the disputed patent," whereas the IPO determined that “Evidence 2 alone discloses the technical features of the disputed patent" as the basis for its decision, without providing the patentee an opportunity to defend against that basis, thereby making a decision unfavorable to the patentee. The court held that if the IPO's basis for its decision differed from the reason asserted by the petitioner, it fell into the "ex officio examination" specified by Article 75 of the Patent Act. Consequently, the IPO is legally obligated to provide the patentee with an opportunity to defend within a specified period, and there is no discretion for the IPO in this regard.
2. 111-Xing-Zhuan-Su-Zi No. 56 Administrative Judgment of the Intellectual Property and Commercial Court
The factual background of this case is quite similar to that in the 111-Xing-Zhuan-Su-Zi No.21 Administrative Judgment of the Intellectual Property and Commercial Court, but the outcomes are markedly opposite. The petitioner asserted that "the combination of Evidence 1 with other evidence proves that the technical features of the disputed patent lack non-obviousness" whereas the IPO determined that "Evidence 1 alone proves that the technical features of the disputed patent lack non-obviousness" as the basis for its decision, without providing the patentee with an opportunity to respond, thereby making a decision unfavorable to the patentee. The court held that although the IPO's basis for its decision differed from the reasons asserted by the petitioner, the IPO has only considered evidence presented by the petitioner, making it not fall into the "ex officio examination" specified by Article 75 of the Patent Act. Therefore, it is not legally obligated for the IPO to provide the patentee with an opportunity to defend.
3. 108-Xing-Zhuan-Su-Zi No. 5 Administrative Judgment of the Intellectual Property and Commercial Court
In this case, the patentee first applied to the IPO for an amendment of the disputed patent. Subsequently, the petitioner raised patent invalidation proceedings against it. The IPO then consolidated the amendment application and the invalidation proceedings for examination and issued decisions of "approval of amendment" and "revocation of the amended patent" simultaneously. That is, the IPO directly compared the evidence presented by the petitioner with the newly amended patent and deduced the basis of its decision, which is not the same as the reasons asserted by the petitioner, without providing the patentee with an opportunity to defend before making a decision unfavorable to the patentee. The court held that since the basis for the IPO’s decision was not the same as the reasons asserted by the petitioner, but was deduced by itself, it fell into the "ex officio examination" specified by Article 75 of the Patent Act, which could potentially lead to a procedural ambush on the patentee; therefore, the IPO must provide the patentee with an opportunity to defend.
4. 102-Xing-Zhuan-Su-Zi No. 74 Administrative Judgment of the Intellectual Property and Commercial Court
In this case, the IPO deemed the reasons asserted by the petitioner insufficient and directly quoted other technical content disclosed in the evidence presented by the petitioner as the basis for its decision, which was unfavorable to the patentee. The court held that even if the scope of the IPO’s consideration did not exceed the scope of the evidence presented by the petitioner, once it quoted the technical content not asserted by the petitioner as the basis for its decision, it should provide the patentee an opportunity to defend.
In the 1st and 2nd cases mentioned above, the IPO used a combination of evidence different from that asserted by the petitioner as the basis for its decision, but the court's views on whether this fell into “ex officio examination” were exactly opposite. However, in the 2nd case, the court held that since the patentee had already defended against "whether Evidence 1 combined with other evidence disclosed the technical features of the disputed patent", it had effectively defended against "whether Evidence 1 alone disclosed the technical features of the disputed patent". This means that even if the IPO used the latter as a basis for its decision, it did not lead to a procedural ambush on the patentee. Thus, although the judgement of the 1st and 2nd cases was opposite, they shared a common standard: whether or not the patentee was provided with an opportunity to defend.
In the 3rd and 4th cases, the court upheld the principle of procedural rights protection. The court held that even if the IPO did not consider materials other than the evidence presented by the petitioner, as long as the patentee had no opportunity to preemptively defend against certain technical content or assertions, the IPO must notify it to the defense. This ensures that the patentee always has an opportunity to defend against each piece of evidence and assertion quoted as the basis for the IPO’s decision.
Therefore, in cases where the IPO uses a combination of evidence different from that asserted by the petitioner as the basis for its decision without providing the patentee an opportunity to defend, the court may adopt two opposite positions. However, even if the court considers the procedures adopted by the IPO fully compliant with the law, it does not necessarily lead to a procedural ambush on the patentee. As for cases where the IPO reaches its decision on assertions or evidence that the patentee had no opportunity to preemptively defend against, the court consistently interprets Article 75 of the Patent Act from a procedural rights protection perspective to avoid procedural ambush on the patentee, which is commendable.
The contents of all materials (Content) available on the website belong to and remain with Lee, Tsai & Partners. All rights are reserved by Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors' opinions do not represent the position of Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Lee, Tsai & Partners.
