Taiwan Supreme Administrative Court finds in favor of Largan Precision Co., Ltd. in utility model patent dispute

　With respect to the dispute among an individual Lu, Taiwan IPO, and Largan Precision Co., Ltd. about the invalidation action against the utility model patent, Taiwan Supreme Administrative Court rendered a judgment on this case and issued a press release as summarized below.  

　Ability opto-Electronics Technology co., Ltd. (hereinafter “Ability”) filed an application for utility model patent with Taiwan IPO for its device titled “dispensing needle head structure” on April 18, 2012 and Taiwan IPO approved Ability’s application and issued a patent certificate thereto on July 9, 2012 (hereinafter the “patent in dispute”).  An individual, Lu, filed an invalidation action against the patent in dispute by the reason of lack of inventive step on August 14, 2014, and the Taiwan IPO made a decision on the invalidation action that the invalidation requested shall be sustained and the patent in dispute shall be revoked.  After that, Largan Precision Co., Ltd. (hereinafter “Largan”) claimed that their former employees provided Ability with Largan’s trade secrets involving Largan’s patent titled “block-associated multi-needle dispenser device” (Chinese: 附擋塊之多針點膠裝置) for Ability’s use and successful patent application for the patent in dispute, and therefore, Largan alleged that it shall hold the right for filing a patent application and also the ownership of patent right for the patent in dispute.  Largan also filed an administrative appeal against Taiwan IPO’s decisions sustaining the invalidation action against the patent in dispute (Ability did not file one), but the administrative appeal turned out unsuccessful after the Ministry of Economic Affairs conducted substantive examination on the appeal, for which Largan initiated an administrative action with Taiwan IP Court.  The IP Court decided in favor of Largan.  According to the IP Court’s judgment, the appeal decision made by the Ministry of Economic Affairs and Taiwan IPO’s invalidation decision should be vacated and both Ability and Lu appealed this case to the Supreme Administrative Court, which rendered a judgment in favor of Largan.  

Summary of the reasoning of the Supreme Administrative Court’s judgment: 

1.  The patentee has an exclusive right to prevent others from exploiting his/her patent without his/her consent after grant of the patent.  For reconciling the interest of and between a patentee and the public, the mechanism of invalidation is established to provide a second chance of having a granted patent examined again by public review after the patent authority’s publication so as to ensure the most just and correct patent granting.  Therefore, during the patent term, in principle, any person may request with the patent authority for revocation of any patent right by presenting sufficient evidence.  To fulfill the public examination purpose of the invalidation proceeding, the patentee and the requester of an invalidation action must confront with each other to conduct the attack and defense in the contentious and confrontational invalidation proceeding.  Due to the nature of two-party rivalry in invalidation proceeding, a patentee shall not file an invalidation action against his/her own patent right.  If any patentee files one against his/her patent, the patent authority shall not accept the request for invalidation.  

2.  As revealed in the facts the IP Court established based on the results of evidence investigation and oral arguments, Lu is not the actual requester of the invalidation against the patent in dispute; it was Ability that actually authorized a patent office to challenge its own patent.  That is to say, this invalidation action was filed by the patentee of the patent in dispute.  As reasoned in the foregoing, Taiwan IPO shall not accept and handle this request for invalidation.  On the contrary, Taiwan IPO accepted it by negligence and further sustained the request for invalidation, and hence, contravened the laws. The appeal decision also affirmed Taiwan IPO’s decision.  In this regard, the IP Court does not contravene the laws by having both the appeal decision and Taiwan IPO’s decisions on the invalidation action vacated, but has correctly determined and sustained facts of this case and properly applied relevant laws herein.  The appeal filed by Ability and Lu is groundless.  (February 2020) 

/CCS