Newsletter
IPO NOTIFICATIONS MUST BE SPECIFIC
In June 2006, the Taipei High Administrative Court overturned a decision of the Intellectual Property Office (IPO) to reject a patent applica-tion filed by the US company Fujifilm Electronic Materials USA, Inc.
In its judgment, the court stated that before ren-dering its decision to reject a patent application, the IPO had fulfilled its duty of prior notification, and had informed the applicant that the claimed invention was already disclosed in the cited prior-art literature. However, the IPO had stated the grounds for its opinion very sketchily, and had provided neither a specific analysis of the technical content, nor a claim-by-claim explana-tion of its rejection, so that the applicant had had no basis on which to put forward a response. This omission by the IPO had violated the prin-ciple of specificity, and was clearly inconsistent with the legislative intent of the Patent Act to assure applicants' procedural right of response.
The court also stated that it was not until during the administrative litigation proceedings had the IPO finally presented a claim-by-claim com-parison of technical content with the cited prior-art literatures. This had exceeded the statutory time limit under Article 114 of the Administrative Procedures Act, which requires that an administrative agency correct a failure to state its grounds for a decision before the com-pletion of related administrative appeal pro-ceedings.
In this judgment, the court reiterated the IPO's duties, when examining patent applications, to give prior notice of rejection, to state the grounds for its decisions, and to comply with the principle of specificity. This judgment provides important guidance on the duties of action incumbent on the IPO when carrying out administrative pro-cedures relating to patent examinations, and its obligation to pay due regard to applicants' pro-cedural rights of response.