經通國際智慧產權事務所

On July 19, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the invention application no. 089120570 with the title of “Optical Thin Film and Liquid Crystal Display Device Thereof” filed on October 3, 2000 and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. In the said decision, the Court noted that even though the defendant issued a notification to the appellant to request amendment of the scope of the disputed patent within the designated deadline, and the appellant did not reply to the said notification, the defendant should still issue an Advance Notice of Patent Rejection to the defendant before rejecting the disputed patent.

The disputed patent was initially rejected based on the reason of lack of inventive step on August 25, 2003. Subsequently, the defendant filed a request of reexamination on September 24, 2003. However, after the claims of the disputed patent were amended by the appellant on March 24, September 6 and December 20 in 2004, the defendant still issued a Final Rejection against the disputed patent on February 5, 2005. The Court noted the defendant’s argument of that prior to the issuance of the Final Rejection, two notifications were sent to the defendant on July 7 and October 21, 2004 by the defendant, but pointed out that the two said notifications were letters of requesting the defendant to amend or clarify the scope of the disputed patent. Thus, as prior to the issuance of the Final Rejection against the disputed patent, the defendant did not issue the Advance Notice of Patent Rejection as set forth in Article 46-2 of Patent Act, the appellant was not righteously given a chance to evaluate the decision of amending or clarifying the scope of the disputed patent based on the Advance Notice of Patent Rejection.

Based on the reasons above, the Court invalidated the decisions by the TIPO and the Committee of Appeal.

Organized and translated by Jenny Yu

International Affairs