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TIPO Plans to Significantly Reduce Situations Triggering Ex Officio Examinations during Invalidation Proceedings



An ex officio examination is an examination conducted by the patent authority on issues not raised by patent invalidation petitioners.  The determination of the validity of a patent does not only resolve the disputes between the parties involved but also affect the rights of a third party. Therefore, in order to resolve disputes once and for all and to avoid uncertainty of rights or adverse impact on public welfare, the patentauthority may, in accordance with the regulations and laws currently in force, examine reasons or combinations of exhibits not provided by the patent invalidation petitioner.
 
Ex officio examinations are permitted under Article 75 of the Patent Actamended in 2011, which states:"During an invalidation proceeding, the Patent Authority may, ex officio, examine reasons and evidence not provided by the patent invalidation petitioner but within the scope of the invalidation statement, and request the patentee to file a response within a specified time period. The invalidation proceeding shall continue even if the patentee fails to respond within the specified time period."
 
According to Section 4.4.2 of Chapter 1 of Part 5 of the Patent Examination Guidelines (the “Guidelines”),a patent examiner may conduct an ex officio examination during an invalidation proceeding in any one of the following situations:
 
1.     The examination decision may be contradictory due to the dependency relations of the disputed claims or the order of examining those claims if no ex officio examination is conducted.
 
2.     The patent invalidation petitioner merely argues that claim 1 of the disputed patent lacks an inventive step, andthe examiner is aware that the invention of claim 1 does not meet the statutory definition of "invention" or relates to an ineligible subject matter.
 
3.     The patent invalidation petitioner merely argues that the disputed claims lack an inventive step, but those claims are indefinitein scope, making an obviousness assessment impossible.
 
4.     The examiner has actual knowledge that the disputed claims are unpatentablein view of the evidence of invalidity, general knowledge and/or evidence from other cases.
 
5.     There is a finalized and irrevocable civil judgement that can be used as a reference. That is, relevant civil judgments on patent infringement cases provide reasons or evidence against the validity of the disputed claims. For instance, the patent invalidation petitioner argues that claim 1 lacks an inventive stepover exhibit 1, while according to a civil judgment the combination of exhibit 1 and exhibit 2 is sufficient to prove that claim 1 lacks an inventive step. If exhibit 1 alone cannot prove that claim 1 lacks an inventive step, an ex officio examination may be conducted to determine whether the combination of exhibit 1 and exhibit 2 can prove that claim 1 lacks an inventive step.
 
The public hassplit opinions on the above-mentioned regulations. Those against them believe that these regulations have made the Taiwan Intellectual Property Office (the “TIPO”) deviate from its neutral position and take sides with the patent invalidation petitioner against the patentee, which is unfair to the patentee.
 
Having taken this into consideration, the TIPO plans to delete situations 1 to 4 from Section 4.4.2 of Chapter 1 of Part 5 of the Guidelines.  The TIPO already held a public hearing on November 7th, 2016 to discuss the deletion. After the TIPO collects opinions from the public, it will make and announce its decision.

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