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25 June 2018
Under the Patent Act, utility model patents are examined using a formality examination system; the Taiwan Intellectual Property Office (TIPO) is not required to perform a substantive examination of patentability.
However, as patent rights are granted without substantive examination, to prevent patentees from IP rights abuse, Article 116 of the Patent Act stipulates that when exercising a utility model patent, the patentee must not issue a warning without presenting a technical evaluation report.
Further, Article 117 of the act sets out that where a utility model patent is revoked, the patentee will be liable for any damages suffered by another party due to the patentee's exercise of the utility model patent right before its revocation. However, this does not apply if such exercise is based on the technical evaluation report and carried out with due care.
As patent rights may still be revoked if the patentee of a utility model patent has acquired the technical evaluation report and exercised its patent right accordingly, the patentee must fulfil a certain duty of care to avoid infringing on third parties' rights.
Where the comparison results of every claim 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 the "creation of the claims cannot be clearly identified even by referring to descriptions and drawings, [and] thus efficient investigation and comparison cannot be conducted", the patentee can still:
In light of the above, the question becomes: if TIPO invalidates such a utility model patent because the "patent claims cannot be supported by descriptions or drawings, which makes the scope of the claims unclear and the contents not understandable" (thereby violating the definiteness requirement under Article 26 of the Patent Act), does the patentee's exercise of its rights constitute rights abuse?
On 23 April 2018 the Intellectual Property Court opined on this matter in the civil judgment 2018-Min-Zhuan-Su-76.
First, the court held that the technical evaluation report's statement that the "creation of the claims cannot be clearly identified even by referring to descriptions and drawings, [and] thus efficient investigation and comparison cannot be conducted" did not correspond to the wording of the Patent Act's definiteness requirement. Moreover, the technical evaluation report had not been an administrative decision and was therefore non-binding. As a result, the previous statement had not meant that TIPO had deemed the disputed utility model patent to have violated the definiteness requirement.
Second, the accused infringer had not requested invalidation based on violating the definiteness requirement until the patent infringement lawsuit had entered second-instance proceedings. The court found it unreasonable to demand that the patentee exercise a high duty of care regarding this cause of revocation after acquiring the technical evaluation report.
Because the patentee had exercised the disputed patent right by sending out warning letters, petitioning for evidence preservation and filing a lawsuit, it must have believed that the patent was valid.
Further, although the patentee had applied to TIPO to amend the patent based on the aforementioned descriptions in the technical evaluation report and add these descriptions to the claims, the Intellectual Property Court remained unable to determine, merely on the basis of this incident, whether the patentee knew that the disputed patent had violated the definiteness requirement.
Therefore, considering that the patentee had exercised its patent right under the understanding that the disputed patent was valid and had fulfilled a certain duty of care before sending out letters, the Intellectual Property Court determined that there had been no negligence or intentional rights abuse to infringe on the plaintiff's rights and dismissed the accused infringer's damage compensation claim.
In this case, a stricter standard was adopted for determining whether the utility model patentee's exercise of rights constituted rights abuse. Nevertheless, when exercising rights, utility model patentees must pay close attention to the comparison results and descriptions in the technical evaluation report to avoid being accused of rights abuse.
For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 715 3300) or email (firstname.lastname@example.org). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.
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