The term “using” under Article 22 of the Patent Act shall include producing, offering for sale, selling, using, or importing that product for the aforementioned purposes. To determine that an invention has been publicly used, its technical contends must have been made public through the aforementioned acts and not necessitated by the actual making, offering for sale, selling, using, or importing that product for the aforementioned purposes by the public. (Taiwan)

Albert Yen

The following decision relates to Article 22 of the Patent Act (Patent Act of 2003, not the current law.) The term “using” in that article was amended to “exploiting” in 2013.

The Supreme Administrative Court rendered the 109-Pan-28 Decision of January 1, 2020 (hereinafter referred to as the “Decision”), holding that the term “using” under Article 22 of the Patent Act shall include making, offering for sale, selling, using, or importing that product for the aforementioned purposes. To determine that an invention has been publicly used, its technical contends must have been made public through the aforementioned acts and not necessitated by the actual making, offering for sale, selling, using, or importing that product for the aforementioned purposes 　by the public.

Here are facts underlying this Decision: the Intervenor previously applied to the Appellee for an invention patent on “RETICLE CARRIER, AND METHOD FOR SUPPORTING A RETICLE” and claimed a priority right based on a US patent counterpart.  The Appellee granted and published the patent and issued the invention patent certificate (hereinafter, the “Patent-in-suit”).  The Appellant subsequently filed an invalidation on the ground that the Patent-in-suit violated Article 22, Paragraph 1 (Subparagraph 1) and Paragraph 4 and Article 26, Paragraphs 2 through 4 of the Patent Act.  The Appellee rendered a disposition that “rejects the invalidation against Claims 1 through 20” as a result of the examination. Dissatisfied, the Appellant filed an administrative appeal, which was rejected by the Ministry of Economic Affairs.  Still dissatisfied, the Appellant brought an administrative action with the Intellectual Property Court (hereinafter, the “Original Trial Court”), hoping to overturn the original decision.  Holding that the decision would affect the rights or legal interest of the Intervenor, the Original Trial Court ex officio asked the Intervenor to independently participate in the Appellee’s litigation.  The Original Trial Court subsequently rendered a decision to set aside the portion of the original disposition that “rejects the invalidation against Claim 14” and the portion of the decision on the administrative appeal that “rejects the administrative appeal with respect to Claim 14 under the original disposition” and to impose a requirement that the Appellee shall render a disposition on the Patent-in-suit that “upholds the invalidation against Claim 14 and revokes that portion of the patent right” with the rest of the Appellant’s claims rejected.  Still dissatisfied, the Appellant appealed against the unfavorable portions of the decision.

According to this Decision, one can see that the recent amendment of Article 22, Paragraph 1, Subparagraph 2 of the Patent Act reinterpreted “using” in a broad sense and now includes acts such as making, offering for sale, selling, using, or importing that product for the aforementioned purposes.  To determine that an invention has been publicly used, its technical contends must have been made public through the aforementioned acts and not necessitated by the actual making, offering for sale, selling, using, or importing that product for the aforementioned purposes by the public. Also, according to the judicial opinions of the Supreme Administrative Court, an object is publicly used if it may be traded by unspecified individuals for purposes of sale, and not necessarily to dissemble the object to learn about its structure.

Further, according to this Decision, because the products as the evidence in the Original Trial Court shows have been sold to unspecified persons, and the technical manual attached to the products contains information sufficient to allow an understanding of the structure and the technical features of the reticle carrier, “public use” is fulfilled since the contents of the technical manual were known.  The original decision’s alleging “the testimonies are not sufficient to support the conclusion that the very important contents of the technical manual, relating to dismantling, cleaning, and reassembly and the structure of the reticle carrier were all shown to the customers” violates the empirical law and logical principles and is certainly erroneous. Therefore, the appeal of this case is well-grounded.