A patent application lacks novelty or nonobviousness if the relevant prior art has been publicly disclosed before the filing date. However, for the fact relevant to the applicant and disclosed within a certain period before the application (not including the disclosure in Taiwan or foreign patent gazette by the applicant for the purpose of applying for a patent), Taiwan Patent Act provides that an invention does not lose novelty or nonobviousness due to said fact. The grace period provision of Taiwan Patent Act was amended in 2016, which extended the grace period for both invention and utility model patent from 6 months to 12 months (for design patent, still 6 months), and loosened restrictions on the disclosure for which the grace period is applicable by providing that the grace period is applicable for a disclosure made at or against the applicant’s will. This February, the Intellectual Property and Commercial Court (hereinafter referred to as "the IPC Court") revoked the decision made by the Taiwan Intellectual Property Office (hereinafter referred to as "the TIPO") in a case No. 2023 Administrative Patent Suit 38, which involved how a patent applicant succeeded in proving that the grace period could be applied.
The patent-in-suit is related to a vehicle external mounted light. The applicant filed a utility model patent application with the TIPO on September 12, 2019. Following the grant and publication of the utility model patent by the TIPO in January of 2020, a third party requested for an invalidation action against said utility model patent. The primary prior art cited was a product web page for a vehicle light published on an online store on July 8, 2019. The patentee (i.e. the patent applicant) defended by submitting several declarations, arguing that the patentee granted a license to said online store to sell said light products before application, and therefore, said web page was intentionally disclosed by the patentee within the grace period. However, the TIPO found inconsistencies between the names of the individuals and the company mentioned in the declarations and those associated with the webpage. Additionally, the declarations were signed after the grant of the utility model patent. The TIPO determined that the declarations failed to establish a connection between the content of the web page and the patentee, and could not enjoy the benefit of the grace period provided by the Patent Act. Therefore, TIPO concluded that the web page was an eligible prior art and made the decision to invalidate the utility model patent due to obviousness. Not being satisfied with the decision, the patent applicant filed an administrative appeal with the Petitions and Appeals Committee, MOEA, which was rejected, and then filed an administrative suit with the IPC Court.
The IPC Court firstly mentioned that the qualified actor who makes disclosure for which a grace period can apply includes the patent applicant, or the person appointed, agreed or instructed by the patent applicant. In this case, the information on the web page about the vehicle light in this case was disclosed with the applicant’s consent and was made at the applicant’s will. By reviewing the patent applicant’s supplementary evidence during the litigation, the IPC Court found that the operators of the online store involved multiple individuals, who were related and had divided responsibilities among themselves—some were responsible for establishing companies, while others managed the online marketplace. The IPC Court acknowledged the declarations from these individuals, along with additional evidence such as backend management data of the online store and information regarding the supply connection for the vehicle light products. As a result, the IPC Court recognized that the web page information can meet the requirements for a grace period and is not eligible prior art evidence that can negate the novelty or nonobviousness. Even though the signing date of these declarations was after the publication of granted patent, the IPC Court considered this to be a post-facto confirmation that the patent applicant and the online store had already entered into a license agreement.
In the course of the litigation, the TIPO had argued that in order to meet the requirements for a grace period, the applicant should have stated the relevant publication facts and the date of occurrence of the facts, and provided supporting documents, when applying for a patent; but, the applicant in the present case only provided an explanation during the invalidation proceedings when challenged by the prior art information on the web page. In fact, the TIPO’s such argument is based upon the requirements before the amendment of the Patent Act of 2016 mentioned above, and the current Patent Act has deleted this unreasonable requirement of stating the publication facts and providing supporting documents at the time of application. The reason for said amendment is to prevent applicants from losing the benefits of the grace period due to negligence or even inability to claim the grace period provision, so as to encourage innovation and promote the early circulation of technology. The relevant Patent Examination Guidelines have also been amended to exclude the requirement for stating or claiming grace period at the time of application. The IPC Court further stated that if the presumed date of disclosure of the evidence in the prior art exceeds (i.e., earlier than) the grace period, the applicant still has the opportunity to argue the benefit of grace period by stating the actual date of disclosure and presenting the relevant evidence, let alone the date of disclosure of the web page in the present case which is obviously still within the grace period. The IPC Court considered that it is not necessary for the applicant to explain the date of disclosure, and that the applicant could provide relevant evidence to prove that the web page was disclosed at the applicant’s will during the invalidation proceedings and litigation, and made a judgment on the substance of the case.
The current Patent Act has significantly relaxed the requirements for patent applicants to claim the grace period provision, and when facing a challenge of novelty and nonobviousness, it also allows the applicant (or the patentee) to present evidence to argue that the disclosure of the prior art is related to the applicant and is made at or against the applicant’s will, and to assert a grace period. It is not necessary for the applicant to state and claim the grace period at application. In this regard, the IPC Court’s decision in this case is the same as the current provision of Patent Examination Guidelines. In addition, the main reason, that the IPC Court in this case substantively changed the TIPO’s invalidation decision, is that the IPC Court can conduct trial through preparatory proceedings and oral argument sessions, and compared with the TIPO, which in principle makes a decision merely in view of written documents, the IPC Court can have more authority to conduct detailed investigations into the evidence supplemented by the patentee. Therefore, if there is evidence related to the grace period that has not been accepted by the TIPO during the patent application or invalidation proceedings, the patent applicant should pay attention to whether there is a possibility of subsequent relief through litigation.