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Determination of Adverse Descriptions in the Technical Evaluation Report for Utility Model Patent and the Abuse of Patent Rights

Hsiu-Ru Chien/Shih-I Wu


Under the Patent Act in Taiwan, utility model patents are examined using a formalities examination system; the Intellectual Property Office is not required to perform substantive examination of patentability.  However, because patent right is granted without substantive examination, to prevent patentees from the abuse of rights, Article 116 of the Patent Act stipulates that when exercising a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of the utility model patent.  Furthermore, it is provided in Article 117 of the same Act that where a utility model patent is revoked, the patentee shall be liable for the damages suffered by another person due to the patentee's exercise of the utility model patent right prior to its revocation; the above shall not apply if such exercise is based on the content of the technical evaluation report and carried out with due care.  It can be understood from the aforementioned articles that even when the patentee of a utility model patent has acquired the technical evaluation report and exercises his/her patent right accordingly, his/her patent right is still subject to the possibility of revocation; therefore, the utility model patentee must fulfill a certain duty of care to avoid infringing upon the rights of a third party.

 

However, if the comparison results of all claims in a technical evaluation report are "unable to discover any literature on prior technology that is sufficient to deny its patentability such as novelty" (code 6), but it is remarked that "creation of the claims cannot be clearly identified even by referring to descriptions and drawings, thus efficient investigation and comparison cannot be conducted", and the patentee still sends out "letters of warning", petitions for evidence preservation and files civil lawsuit of infringement based on this technical evaluation report; in the event such utility model patent is subsequently revoked by the Intellectual Property Office due to cause of invalidity in that "patent claims cannot be supported by descriptions or drawings, which makes the scope of the claims unclear and the contents not understandable" (which is in violation of the requirement under Article 26 of the Patent Act, hereinafter referred to as the "definiteness" requirement), does the patentee's exercise of rights constitute abuse of rights?

 

The Intellectual Property Court 2018-Min-Zhuan-Su No. 76 civil judgment made on April 23, 2018 expressed opinions upon this matter.  First, the court opined that the statement in the technical evaluation report that "creation of the claims cannot be clearly identified even by referring to descriptions and drawings, thus efficient investigation and comparison cannot be conducted" did not correspond with the wording of the "definiteness" requirement under the Patent Act; moreover, the technical evaluation report was not an administrative decision and was therefore non-binding.  As a result, the aforementioned statement did not mean the Intellectual Property Office had determined the disputed utility model patent to have violated the "definiteness" requirement.

 

Second, in the said case, the accused infringer did not request invalidation based on the violation of "definiteness" requirement until the patent infringement lawsuit had entered second instance proceedings.  The court found it unreasonable to demand that the patentee fulfill high degrees of duty of care regarding this cause of revocation after having acquired the technical evaluation report.  Where the patentee exercised the disputed patent right by subsequently sending out letters of warning, petitioning for evidence preservation and filing lawsuit, his subjective understanding must have been that the said patent was valid, therefore there was no intention or negligence to infringe upon the plaintiff's rights.

 

Moreover, although the patentee of said case had applied to the Intellectual Property Office for amendment based on the aforementioned descriptions in the technical evaluation report and to add the contents of the description into the claims, the Intellectual Property Court remained unable to determine merely on the basis of this incident whether the patentee knew the disputed patent was in violation of the "definiteness" requirement.  As a result, considering the patentee had exercised his patent right under the understanding that the disputed patent was valid, and had fulfilled certain duty of care before sending out letters, the Intellectual Property Court determined that there was no intention or negligence to rights abuse and dismissed the damage compensation claim of the accused infringer.

 

In this case, a stricter standard was adopted for determining whether the exercise of rights by the utility model patentee constituted abuse of rights; that being said, when exercising rights, utility model patentees shall nevertheless pay attention to the comparison results and descriptions stated in the technical evaluation report to avoid the risk of being accused of rights abuse.
 



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