9 Oct
2019

Taiwan IP Court’s perspective on TIPO’s ex officio examination

Co-published

The Taiwan IP Court has revoked an invalidation decision made by the Taiwan Intellectual Property Office (TIPO) due to a procedural illegality.

The patent at issue was Utility Model Patent M401583, which relates to a vehicle headlamp that comprises a housing with a rear opening for receiving a light source and a ventilation hole, which opens into the rear opening of the housing. After the patentee made a post-grant amendment, to which the additional technical features of the dependent claims 2 to 6 were added to the independent claim 1 as published, an invalidation action with regard to the original claim 1 of this patent was filed. According to Article 118 of the Taiwan Patent Act and procedures established in the Examination Guidelines, the post-grant amendment would be substantially examined along with the invalidation action.

In the invalidation action, the invalidating party compared the original independent claim 1 with the prior art (US Patent 6,283,614B1 (Okada)) to challenge the novelty of the claimed invention. The invalidating party also alleged that claim 1 of the patent lacked the required inventive step, but did not provide any support for this allegation. The patentee filed a rebuttal to distinguish the technical features of the amended claim 1 from Okada.

During the invalidation proceeding, TIPO notified the invalidating party and invited it to comment on the post-grant amendment. However, the invalidating party did not respond to TIPO’s notification. TIPO then made a decision to grant the post-grant amendment to claim 1 but ruled that the amended claim 1 was invalid due to an alleged lack of the required inventive step. Specifically, TIPO stated in its decision that the technical features of the amended claim 1 – including the housing, the lens, the holder, the ventilation hole, the ventilating duct and the structural design as well as the configuration thereof – were disclosed by Okada. TIPO further stated that although Okada did not indicate that the holder is arranged in the rear opening of the housing, such difference is a simple modification of Okada and has no unexpected effect. The amended claim 1, TIPO ruled, was thus invalidated. The Petitions and Appeals Committee of Taiwan’s Ministry of Economic Affairs (MOEA) sustained TIPO’s decision.

The patentee filed an administrative litigation to appeal TIPO’s decision, arguing that TIPO had essentially raised a sudden assertion against it by failing to give it the opportunity to express opinions and make rebuttals before rendering a hasty decision that was unfavourable to the patentee. In more detail, the invalidating party did not provide any substantive grounds upon which to support, let alone prove that the original claim 1 of the patent at issue lacked the required inventive step, and in addition, after the post-grant amendment was made, it provided no further invalidation grounds to challenge the amended claim 1 of the patent at issue.

Obviously, TIPO developed the reasoning for its ruling on its own for matters not raised by the invalidating party and made a decision unfavorable to the patentee. TIPO clearly violated IP laws by not adhering to the principle of the burden of proof. Even considering that TIPO performed the examination of the invalidation case ex officio and issued the decision, it still failed to give the patentee an opportunity to express its opinions and make rebuttals in response to TIPO’s ex officio findings.

The IP Court agreed with the patentee and revoked TIPO’s and the MOEA’s decision with respect to the validity issue of the amended claim 1. It reasoned that the difference between TIPO’s decision and the invalidating party’s invalidation grounds resulted from TIPO’s examination, which was irrelevant to the evidence investigation and the IP Court opined that there was no doubt that TIPO examined the invalidation case ex officio.

According to the judgment, TIPO’s ex officio examinations are restricted to exceptional situations. An example of such an exceptional situation is where a civil litigation judgment involving the invalidation issues of the same patent is affirmed. As for general cases, the invalidating party is required to bear and meet its burden of proof. Further, when examining an invalidation case ex officio, TIPO must be very careful, and must inform the patentee of its opinions so that it had the opportunity to respond to TIPO’s opinions.

In this case, the IP Court ruled that TIPO improperly intervened in the disputes between the parties and examined the invalidation case ex officio without giving the patentee the opportunity to respond to TIPO’s opinions, resulting in a procedural illegality. The IP Court thus revoked TIPO’s decision.

For further information contact:

Peggy Hung
Formosa Transnational
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Frank Lu
Formosa Transnational
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This is a co-published article whose content has not been commissioned or written by the IAM editorial team, but which has been proofed and edited to run in accordance with the IAM style guide.