If the Intellectual Property Office Accepts For Consideration Chinese Translation of Invalidation Evidence Ex Officio, Is It Required to First Notify the Patentee of Any Opinions Thereon?

09/26/2025

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Article 75 of the Patent Act stipulates “When conducting invalidation proceedings, within the scope of the invalidation statement, the competent patent authority may, ex officio, consider reasons and evidence not provided by the invalidation requester, and shall simultaneously notify the patentee to respond within a specified period.  The examination of said invalidation shall proceed if the patentee fails to respond in due course.”  Therefore, while the Intellectual Property Office (“IPO”) may investigate ex officio reasons and evidence not submitted by the invalidation requester, the IPO shall still notify the patentee to present opinions on such evidence within a specified time limit for the procedure to be lawful.  However, it should be further clarified whether all documents considered ex officio by the IPO necessarily constitute “reasons and evidence not provided by the invalidation requester” and thus require referral to the patentee for opinions needing further clarification.  In the 2024 Xing-Zhuan-Su-zi No. 47 Administrative Judgment, from the Intellectual Property and Commercial Court (hereinafter “Court”) on 10 April 2025, it was decided that, where the IPO obtained a Chinese translation of invalidation evidence submitted by the requester thereof through machine translation, there was no requirement to notify the patentee for response within a specified period. 

In this case, the plaintiff, being the patentee, argued as follows.

During the invalidation proceedings, the defendant (the “IPO”) considered a Chinese translation of Exhibit 2 (a U.S. patent written in English) provided by GOOGLE PATENT.  However, such Chinese translation was not provided by the invalidation requester.  Therefore, pursuant to Article 75 of the Patent Act, the IPO should have first notified the patentee to respond.

However, the Court held that the plaintiff’s argument was without merit, for reasoning summarized as follows.

1. Article 74 of the Patent Act provides “The competent patent authority may proceed to examine the invalidation if submission of opinions or supplementary response is likely to delay proceedings, or if the facts and evidence are sufficiently clear.”  This provision, amended and promulgated on 1 May 2019, was intended, as explained in the legislative reasons for the same, to avoid delay of invalidation examination caused by “ping-pong” submissions of new arguments, and allow the patent authority to proceed directly when the facts and evidence are sufficiently clear.
2. Exhibit 2 is a U.S. patent written in English.  Since English education in Taiwan begins at the junior high level, and given the educational background of lawyers and patent agents engaged in patent practice, comprehension of this level of English is not difficult.  Furthermore, various translation tools are also available online.  Therefore, even if the invalidation requester provided no Chinese translation or excerpt, under current practice, the IPO would still prepare or obtain one for review.  In this case, the Chinese translation of Exhibit 2 ultimately utilized in the original decision was not the invalidation requester’s translation, but rather the GOOGLE PATENT translation, which the IPO deemed sufficiently accurate and adopted.  As the facts and evidence were already sufficiently clear, the IPO proceeded directly with the examination, which did not prejudice the plaintiff’s rights.
3. The Chinese translation of Exhibit 2 was not itself the invalidation evidence in this case, nor was necessary to await the plaintiff's presentation of opinions on the Chinese translation before continuing the examination.  The IPO's approach is consistent with the legislative purpose of avoiding delay from “ping-pong” submissions of new arguments.  The plaintiff’s assertion that, under Article 75 of the Patent Act, the IPO was required to notify the plaintiff to respond to the Chinese translation of Exhibit 2 was based on the mistaken understanding that the Chinese translation itself constituted the invalidation evidence in this case.  Accordingly, IPO conduct in this administrative procedure was deemed free of defect.