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Does the IP Court Need to Investigate the Technical Evaluation Report of a Utility Model Patent When Conclusions of the Report Differ from Results of Invalidation Actions?

Hsiu-Ru Chien/Shih-I Wu


Without any prior-art search and substantive examination, a patent application for a utility model can be granted as long as criteria of required formality examinations are fulfilled.  Utility model patents thereby enjoy relatively insufficient stability of rights when compared with invention patents and design patents granted upon substantive examinations.  The Patent Act is, therefore, designed with a "Technical Evaluation Report of Utility Model Patent" system.  Any person may file a request with the Intellectual Property Office (the "IPO") for a technical evaluation report after a patent application for a utility model is published. The IPO shall issue the technical evaluation report with respect to its patentability, including its novelty and non-obviousness (Article 115 of the Taiwan Patent Act).  Moreover, to prevent right abuses by the patentee of a utility model patent, the Patent Act also provides: When exercising a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of the utility model patent; and where a utility model patent is invalidated later, the patentee shall be liable for the damages suffered by the adverse party due to the patentee's exercise of the utility model patent right prior to its invalidation unless such exercise is based on the content of the technical evaluation report and carried out with due care (Articles 116 and 117 of the Taiwan Patent Act).
 
However, in the event that the IPO first concludes in favor of the patentee, stating in its technical evaluation report that the concerned utility model patent does not have any unpatentable matters such as a lack of patentability, but then announces in later patent invalidation proceedings that the utility model patent shall be invalidated, does the Taiwan Intellectual Property Court (the "IP Court") need to, during administrative litigation proceedings, investigate the technical evaluation report and examine differences between conclusions of the report and the patent invalidation results, or would the IP Court's judgment be deemed to lack reasons and thus have violated the laws and regulations?  
 
The Taiwan Supreme Administrative Court negated the abovementioned claims made by the patentee in its 2016-Pan-No.618 judgment on November 24, 2016.  According to the Taiwan Supreme Administrative Court, the IP Court is given by laws the authority to examine and determine patent validity; if the IP Court holds that evidence and materials provided by the parties involved have sufficed to resolve disputes concerning patent validity, its judgment, though different from conclusions of decisions made by the original government agency (i.e., the IPO) or the agency responsible for administrative appeals (i.e., the Ministry of Economic Affairs), should not be deemed in contravention of the laws and regulations.  This is a logical construction of the principle behind the System of Administrative Litigation Events.  Therefore, if the IP Court has elaborated its analysis process and judging grounds for a lack of non-obviousness of the disputed patent, it would be sufficient to imply that its judgment has obviously put aside conclusions made in the technical evaluation report.  The fact that the IP Court did not expressly indicate that the technical evaluation report was inadmissible and did not notify the two parties involved to express their opinions about the report does not constitute a violation of the laws and regulations or a groundless judgment.

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