經通國際智慧產權事務所

On November 15, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of invalidating the patent application with the title of “Structure and Manufacturing Process of Chip Encapsulation” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Taipei High Administrative Court. Regarding the said decision, the Court noted that the examination procedure of the disputed patent was terminated as soon as the notification of official grant was issued, and because the applicant did not attend to the registration fee and annuity before the official deadline provided by the notification of official grant, the TIPO (defendant) lawfully invalidated the disputed patent.

The said notification of official grant was delivered to the appellant on Apr. 26, 2006. However, the appellant did not attend to the official fees within the 3 months period set forth in the said notification. Therefore, as set forth in Article 51-1 of Patent Act, the patent right shall not exist ab initio.

During the trial, the appellant provided the following arguments:

1. Because a request of amendment of the disputed patent was filed with the defendant within 15 months (on June 12, 2006) counting from its filing date, the examination of the disputed patent should resume.
2. According to Article 2 of Administrative Appeal Act, the appellant’s rights were harmed by the defendant’s inability of issuing the rejection against the request of amendment of the disputed patent within the statutory deadline of 2 months counting from the filing date of the said request.
3. According to Article 29-1 of Patent Act, priority (based on prior domestic applications) could be claimed within 12 months counting from the filing date. As the disputed patent was granted for registration within 12 months, the appellant was deprived of the right of claiming priority.

Regarding the said arguments, the Court provided that as set forth in Patent Examination Standards 1.1.5.3 “no request of rectification, correction or amendment shall be allowed after the issuance of the official grant and before the attendance of the registration fee”. In addition, the defendant’s inability of issuing the rejection against the request of amendment of the disputed patent within the statutory deadline was confirmed by the Court. However, the Court noted that the appellant should have filed an appeal against the rejection with regards to the amendment of the disputed patent; and based on Article 2 of Administrative Appeal Act, the delayed rejection issued by the defendant only entitled the appellant the right to file an appeal and would not necessarily lead to the invalidation of the said rejection. At last, the Court noted that as set forth in Article 29-1(4), claim of priority right should not be allowed if the examination decision has been made in respect of the prior patent application

Based on the reasons listed above, the Court ordered to reject the appellant’s claims.

Organized and translated by Akina Pan

International Affairs