經通國際智慧產權事務所

On April 12, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the patent application with the title of “The Method and Peripheral Equipments for Downloadable Firmware Programming Codes of Peripheral Equipments” filed on August 13, 2001 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 because the Advance Notice of Patent Rejection issued by the defendant did not provide concrete and independent reasons regarding the patentability of each claim of the disputed patent, the appellant was unable to evaluate the necessary amendments required for overcoming the Advance Notice of Patent Rejection. Therefore, the defendant interfered with the appellant’s competent submission of response to the Advance Notice of Patent Rejection within the official deadline.

The defendant issued the Rejection against the re-examination of the disputed patent on July 25, 2005. The Court noted that the said Advance Notice of Patent Rejection and the Rejection against the said re-examination provided the same reasons of rejecting the disputed patent, and neither the prior arts’ disclosure of the disputed patent’s technologies nor the technological differences between the prior arts and the disputed patent were concretely and completely provided in the said reasons. Thus, since the said Rejection violated Article 5 and Article 96(2) of Administrative Procedure Act by not providing clear and definite reasons, the defendant’s inability of submitting the response to the Advance Notice of Patent Rejection was caused by the defendant, and could not be the ground for the said Rejection of Re-examination.

The Court further noted that as the said Advance Notice of Patent Rejection and Rejection of re-examination did not concretely provide the reasons of establishing the lack of novelty or inventive step for each independent claim and their sub claims of the disputed patent, the principle of individual claim examination was violated. Even though the defendant provided clear and definite claim-by-claim reasons of rejecting the disputed patent during the trial, because Article 114 of Administrative Procedure Act provided that “An administrative disposition rendered in contrary to the required procedure or form is amendable only before the administrative appeal procedure is concluded”, the Court deemed the reasons of rejection provided during the trial by the defendant unacceptable.

As for the appellant’s request of granting the patent right of the disputed patent, the Court noted that since the individual claim examination was not properly conducted by the defendant, and the said Rejection by the defendant violated Article 5 and Article 96(2) of Administrative Procedure Act, the defendant should re-examine the disputed patent. Moreover, considering the appellant’s expressed willingness to delete claim 8 and its sub claims if the disputed patent were to be re-examined, the Court also noted that the acceptability regarding the amendments of the claims of the disputed patent were not under the Court’s jurisdiction.

Based on the reasons above, the Court ordered to invalidate the decisions by the TIPO and the Committee of Appeal, and requested the disputed patent to be re-examined by the defendant.

Organized and translated by Tony Chen

International Affairs