Newsletter
IPO SHOULD CITE SOURCE OF PRIOR ART EVIDENCE
Article 40 Paragraph 2 of the Patent Act provides that if on re-examination of a patent application it is determined that there are grounds for not granting a patent, then before the re-examination decision is rendered the applicant shall first be given notice to respond within a limited time period. However, the Act does not define the content of the notice to be given, such as whether the Intellectual Property Office (IPO) must state in detail the reasons for not granting a patent, and whether it must disclose the source of any evi-dence that it relies upon as grounds for rejection.
In a 2002 administrative suit over an invention patent application, the Taipei High Administra-tive Court held that the IPO had acted unlawfully when it rejected an application on the grounds that the invention lacked inventive step, because it had not indicated the source of the evidence on which it had based its rejection. The court set aside the appeal decision of the Ministry of Economic Affairs and the original decision of the IPO, and required the IPO to reexamine the case and render a new decision in keeping with the court's judgment.
The court stated that according to the "basic principles for determining inventive step" con-tained in the IPO Patent Examination Guidelines, when determining that an invention lacks inven-tive step, in principle an examiner should cite as evidence information on specific existing tech-nology or knowledge, or if such existing tech-nology or knowledge is well known or in com-mon use, this too should be fully explained in the written decision. The IPO's re-examination de-cision was defective in that it failed to properly state the grounds for the decision as required by the guidelines, and was thus in breach of Article 40 Paragraph 2 of the Patent Act.
The court also noted that under Article 114 Paragraph 1 Subparagraph 2 of the Code of Administrative Procedure (CPA), an adminis-trative decision in which the grounds for the de-cision are not adequately stated may be subse-quently cured by stating the grounds, but that under Paragraph 2 of the same article, such cor-rection may only be made before the completion of any administrative appeal. However, in the case before the court, the IPO's original decision had failed to state the grounds for the decision, and when presenting its defense during the ad-ministrative appeal the IPO had not specifically indicated the source of the technology on which it based its rejection of the patent application, nor had it adequately explained the technical content of such technology. As a result, the patent ap-plicant had not received sufficient information to be able to respond to the decision, propose amendments to the application, or present a de-fense. This violated the principle of participation by interested parties as set out in Articles 102 to 108 of the CPA.
Since the CPA took effect on 1 January 2001, the Supreme Court and the Taipei High Administra-tive Court have elucidated the meaning of the principles of "changed circumstances," "good faith," "proportionality," "equality," and "par-ticipation of interested parties" under the CAP, and have cited these principles as the legal basis for their judgments. This should have far-reaching effects on the handling of similar cases by the IPO, the MOEA (as the appellate agency for appeals against IPO decisions), and the courts.