Based on the principle of "administration according to law," once an administrative authority discovers that any of the administrative decisions made by itself is illegal, in principal, it may revoke such illegal decisions on its own initiative, subject to Article 117 of the Administrative Procedure Act. However, there exists room for explanation in legal regulations, and the actual operating circumstances are different among different administrative authorities. Therefore, it is inevitable that disputes will arise when the preceding provision is actually implemented.
In this regard, to protect the rights and benefits of patent applicants and patentees, and to fully improve the quality of patent examinations, the Intellectual Property Office (hereinafter referred to as “TIPO”), as Taiwan's competent authority in charge of relevant matters of patent issuance and examination, announced “Examples of Self-Revocable Decisions” (https://www.tipo.gov.tw/ct.asp?xItem=646798&ctNode=7127&mp=1） on TIPO’s website on October 31, 2017. For the decision of a patent case in the initial examination period, re-examination period, or an invalidation case, it clearly lists the examples of three illegal types: “wrong finding of facts”, “wrong application of laws” or “breach of procedural or formal requirements.” It also states several concrete circumstances for each type in detail:
- The type “wrong finding of facts” includes the circumstances of “ineligibility of cited literature” and “wrong examined version.” The former is concerned with situations such as citing the documents after the date of filing (or the date of priority) to prove the contention of the lack of novelty or an inventive step. The latter is concerned with situations such as when the TIPO examined the version before the amendment, even though the applicant has already submitted the revised version of the specification.
- The type “wrong application of laws” includes the circumstances of “wrongly cited laws for combination of plural references” and “failing to disapprove an invention patent according to Article 46 of the Patent Act (or failing to disapprove a design patent according to Article 146 of the Patent Act).” The former one is concerned with situations such as combining the whole or part of the technical content in several references as the comparative document for “lack of novelty.” Regarding the latter one, taking an invention patent as an example, it refers to an invention patent which is not disapproved for the reasons of breaching “definition of invention,” “patentability,” “fictitious novelty,” “legally prescribed matters for refusing a patent,” “description requirements,” “first-to-file principle: choose one, negotiation,” “double applications for one case, which fails to make a respective declaration or choose one upon deadline; utility model patent has been extinguished or revoked,” “unity,” “divisional patent exceeds the original scope,” “amended patent exceeds the original scope,” “the supplementary Chinese version exceeds the scope of the original foreign language version or the correction of wrong translation exceeds the scope of the original foreign language version,” or “converted patent exceeds the original scope.”
- The type “breach of procedural or formal requirements” includes the circumstances of “failing to notify the applicant to file a response within a specified time period before the notices of disapproval decision,” “inconsistency or omission of the content of the decision of patent examination” (i.e., the main text and reasons for a decision of patent examination are inconsistent, the reason for a decision of patent examination is left empty or filled in with wrong examination reasons of other cases) and “wrong target party” (i.e., before examination, the applicant or patentee has changed, or the recordation of a patent assignment has been made, but the decision of the patent examination is still made with the original applicant or patentee).
The TIPO clearly stated that if an administrative disposition or decision meets any of the illegal types, the responsible examiner shall revoke the original decision by itself and examine again. Even if the defect involved in the decision is not one of the aforementioned types, the responsible examiner may, depending on the extent of the defect, deal with the defect of the original decision by revoking or revising it.
In addition, the TIPO’s website also stated that, with respect to cases for which re-examination has been applied and examination fees have been paid, if any of the above-identified illegal types of the decision made in the initial examination period is later found, the TIPO will revoke the original decision in the initial examination period, refund the overpaid fee, recover the initial examination period, and examine again.
Such “Examples of Self-Revocable Decisions” announced by the TIPO provides a concrete basis of determination as to the circumstances in which the TIPO may revoke its decision on its own initiative. For patent applicants and patentees, it undoubtedly has considerable value as a reference.