Posted by: A & Finet International Patent & Law Office
Practice Area: Patent    Country: Taiwan R.O.C.    Publish Date: 22-Sep-2009

On May 3, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the priority claim of patent application no. 094113022 with the title of “Carton with Two-step Opening Feature Defining Yieldable Dispenser for Selective Removal and Retention of Articles” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. In the said decision, the Court noted that the patent description in Chinese was required when filing a patent application with priority claims. However, as the defendant (TIPO) did not thoroughly check all the submitted required documents when the said patent application was filed, the Court deemed the defendant’s negligence as misconduct.

With the claims of priority dates of September 30, 2004, October 4, 2004 and October 8, 2004, the said patent application was filed with the defendant on April 22, 2005. On May 5, 2005, the defendant issued a notification to the appellant for making rectification of the diagrams and patent description in Chinese before the deadline of August 22, 2005. However, the documents requested by the defendant were only submitted by the appellant more than 12 months after the said priority dates on October 18, 2005. Thus, as set forth in Article 27-1 of Patent Act, because the allowed period claiming priority was within 12 months from the filing date of the original application, the defendant rejected the priority claims of the said patent application and assigned October 18, 2005 (date of submitting rectification) as the application date.

The Court examined the case and provided the following statements,

1. The filing documents of the said patent application indicated that the patent descriptions in Chinese and English were submitted together with the priority documents to the defendant on April 22, 2005.
   
2. The defendant claimed the diagrams and patent description in Chinese were not submitted on the April 22, 2005. However, based on the empirical rule and evidence submitted by the appellant to demonstrate the defendant’s standard procedure, the defendant should have confirmed the indication of the said patent application to be in accordance with the actual documents submitted by the appellant on April 22, 2005.
   
3. The defendant provided the argument of that if the said patent description in Chinese was submitted by the appellant on April 22, 2005, the appellant would have provided explanation to the defendant after receiving the said rectification notification. However, the Court noted that because the said rectification notification by the defendant listed the required submission of several documents and was without clear wording, the said argument by the defendant was not accepted.
   
4. The Court also pointed out that the same invention as that of the disputed application was already filed as a patent application with the defendant before April 22, 2005, and the said earlier filed patent application was withdrawn on April 22, 2005. Therefore, since the patent description in Chinese of the disputed patent application was submitted to the defendant as early as January 12, 2005, it was not reasonable for the appellant not to submit the said patent description on April 22, 2005.

Based on the reasons above, the Court noted that the said patent description in Chinese should be considered as submitted on April 22, 2005, and ordered to invalidate the decisions by the TIPO and the Committee of Appeal.

Organized and translated by Eunice Yang
International Affairs

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