IP Court clarifies whether online publication counts in patent spat

Under Taiwan’s patent law, an invention must not be published before a patent application is filed in order for it to be patentable. However, the issue of whether information or documents published online can be considered as “published information” has triggered intense debates in several invalidation cases. On 31st August 2009, the IP Court of Taiwan issued a judgment (2009-Xing-Zhuan-Su-33) in an invalidation case against a utility model patent in which it clarified the issue of publication of online information. The judgment provides crucial critera for determining whether online information is admissible in patent invalidation battles.

The disputed patent relates to a card connector, which includes an insulated housing and an engaging portion designed to receive multiple contacts. The card connector also includes a cover assembled on the housing; this comprises an L-shaped receiving space for receiving a card, a base portion and two opposite side portions. The Taiwan Intellectual Property Office (TIPO) first rejected the invalidation application on 23rd June 2008. However, this decision was overruled by the appeal authority, the Ministry of Economic Affairs (MOEA), which remanded the case to the TIPO for a fresh judgment in accordance with the MOEA’s decision on 2nd February 2009. The patentee disagreed with the MOEA’s decision and appealed to the IP Court. 

The core issue was whether the invalidation evidence provided by the invalidator had been publically distributed, according to the publication requirement set out in the Patent Act. The invalidation evidence in question was a document called the ExpressCard Standard, which can be downloaded from the website of the Personal Computer Memory Card International Association (PCMCIA) by its members for a fee. The following note appeared on each page of the document:“THIS DRAFT DOCUMENT IS FOR REVIEW AND DISCUSSION ONLY. THIS DOCUMENT IS NOT FOR PUBLICATION OR GENERAL DISTRIBUTION AND IS SUBJECT TO REVISION OR REJECTION BY THE PCMCIA.” 

The patentee thus argued that the document was clearly not intended for distribution to the public and was therefore not a “publication” as set out in the Patent Act.

In addition, page two of the document further stated that: “This document is being provided solely for the internal business use of the company who purchased the standard and whose name is watermarked throughout the document. All other use, including distribution to third parties in any medium, is expressly prohibited.”

As such, the patentee argued that the document’s distribution was controlled and made to specific subjects only. It was not, therefore, a publicly available document and was consequently not admissible as invalidation evidence under the Patent Act.

However, the defendant, the MOEA, rebutted that the statements or notices contained in the document should not be considered as determining factors with respect to the criteria for publication. It argued that the binding power of these statements derived from copyright protection, which prohibited the document owner from distributing or copying it without the PCMCIA’s authorisation. In fact, however, any PCMCIA member could download this document. In addition, the certificate of purchase of the ExpressCard Standard stated: “Join PCMCIA today and receive a full refund of your ExpressCard standard purchase price.” It therefore followed that, in fact, anyone could freely download the document. As such, PCMCIA did publish the document on its network, distributable to unspecified persons, and the requirement of publication under the Patent Act was met.


The IP Court dismissed the patentee’s appeal on the following grounds. First, a “publication”, as defined in the Patent Act, includes all information accessible by the public via the Internet and electronic databases. In determining whether the information on a network may be deemed a publication, the court must take into account how the public learned of the website or its address. Whether access to the network was limited by a password or payment was irrelevant in this case. Even if a password or a payment were required, the information on the website would still be deemed to have been published if anyone could freely access it by applying for the password or making the payment in question. In this regard, the document was available for download (access) freely by unspecified persons upon payment or password application and, as such, the information was already publicly available.

Second, the document was marked “for internal business use of the company”, “distribution to third parties in any medium, is expressly prohibited” and “IS NOT FOR PUBLICATION OR GENERAL DISTRIBUTION”. While these statements clarified the scope of the permitted usage by document owners, it did not follow that all owners were consequently bound by a confidentiality obligation with respect to this document merely based on such statements. Hence, the court could not conclude that the information had not entered the public domain simply based on such statements.

Third, the document was marked “THIS DRAFT DOCUMENT IS FOR REVIEW AND DISCUSSION ONLY” and “IS SUBJECTED TO REVISION OR REJECTION BY THE PCMCIA”. However, in fact the document was accessible by unspecified persons by payment. It was unreasonable to consider the document as non-public information simply on the basis of the word “DRAFT” printed thereon. 

The IP Court thus concluded that the document did indeed constitute public information and rejected the patentee’s appeal.

In its judgment, the IP Court ruled on the issue of “publication” based on the substantive status of the information rather than through a formalistic review of how the information had been labelled or qualified. The case may still be appealed to the Administrative Supreme Court, but the IP Court has nevertheless demonstrated its inclination to give more weight to the factual realities regarding accessibility in its review of the criteria for publication of online information under the Patent Act.

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