In February of this year, the Supreme Administrative Court, unusually, rescinded a Judgment rendered by the IP Court on a case appealed for administrative remedy.
In 2005, an Invalidation Action was filed with Taiwan’s IP Office (TIPO) against a Utility Model Patent based on two evidentiary documents. Upon examination, the TIPO dismissed the Action as groundless for the reasons that the two documents, either alone or in combination, fail to disclose or suggest the salient features of the device as claimed in the challenged Utility Model Patent. The Invalidation Petitioner then pursued an appeal, and in turn, an administrative litigation with the IP Court, against the Decision rendered by the TIPO (the Defendant), an attempt to tip the scales in their favour.
During the litigation proceedings, two new evidentiary documents were submitted for further support of the Petitioner’s contention that the challenged Utility Model Patent is invalid.
The IP Court, after hearing the case, issued a Judgment, adjudicating that as the TIPO acknowledged in its Counter-statement that the two new documents, either alone or in combination, are capable of destroying the inventive step of the device claimed in the challenged Utility Model Patent, the former Decisions shall be cancelled and the TIPO shall issue a new decision cancelling Claims 1-10 from the challenged Utility Model Patent.
It ended with the Patentee not being satisfied with this result. They thus filed an appeal with the Supreme Administrative Court for remedy in the capacity of an intervening party, mainly claiming that--:
An oral hearing was held during the litigation proceedings in our absence, but it is unlikely that the TIPO asked for an ex parte hearing. Further, it was not a fair trial as a whole since we were deprived of any chance to submit an argument/ claim amendment against the TIPO’s opinions or the two new evidential documents presented before, during, or after the hearing was held.
The Supreme Administrative Court ultimately rescinded the IP Court’s Judgment reasoning that it is improper for the IP Court to allow an ex parte oral hearing to be held, and to proceed, without the TIPO asking for a default judgment on that hearing date. Given that there is no ground to excuse such a procedural default, the case needs to be remanded for a new determination.
It is, indeed, of rare occurrence that a procedural defect has resulted in a reversal of a court judgment at the highest court level. However, as the TIPO and the IP Court have reached a consensus in this case that the device claimed in the Utility Model Patent lacks inventive step, it would be a challenge to the Patentee to map out a strategy on how to convince the IP Court that the claimed device is patentably distinguishable over the two new evidential documents, either alone or in combination.