Before Filing an Administration Suit, an Appeal Should Have Been Filed First

Logo_JAW-HWA1An official decision was made by the TIPO which deemed that the Claims 1 and 2 of a patent should be invalidated due to lacking inventive step according to the Patent Act, Article 22.IV. The patentee filed an Appeal up to the MOEA (Ministry of Economic Affairs, R.O.C.) arguing that the Claim 1 of the patent should be patentable. The MOEA dismissed the Appeal by holding the same opinion that the Claim 1 of the patent lacked inventive step. The patentee (plaintiff) filed an Administration Suit against the decision of the Appeal by the reason that the combination of Evidence 3 and 4 were not sufficient to prove the lack of inventive step of the Claims 1 and 2 of the patent.

The IP Court made a judgment concerning the part of Claim 2 raised in the Administration Suit:

1. According to the Article 4.I of the Administrative Litigation Act, before filing an Administration Suit, an Appeal should have been filed first. It is not allowed to file the Administration Suit without going through the proceeding of Appeal.
In addition, according to the Patent Act, Article 73.II: where a patent contains more than one claim, an invalidation action may be filed against parts of the claims.
Article 149.II: With respect to a request for post-grant amendment and invalidation action which is still pending at the time of the implementation of the November 29, 2011, amendment of this Act, the amended Patent Act shall govern.

2. The decision of the Invalidation against the Patent at issue has not yet been made before the enforcement of the new Patent Act effective on January 1, 2013, so it applied to the new Patent Act that the claims should be examined one by one in an Invalidation application. Therefore, the TIPO (defendant) made an official decision mentioning that the Claims 1 and 2 of a patent should be invalidated.
However, the patentee filed the Appeal for the patentability of the Claim 1 only but no allegation about the Claim 2 therein. Therefore, since the Claim 2 did not go through the proceeding of Appeal, the Administration Suit about the part of Claim 2 should be dismissed.

Source: TIPO Newsletter issued on October 05, 2014

Delivered by: Sandy WANG (Ms.) / Senior Partner

10-1A Fl., No. 23, Sec. 1, Chang-An E. Rd.,
Taipei, Taiwan, R.O.C.
Tel.: +886 2 2531-0876 Ext. 172
Fax: +886 2 2581-2761

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