The Supreme Administrative Court recently held in a patent invalidation case that the court should consider only the invalidation reasons and evidence submitted by the party petitioning for the invalidation action. The court further held that if it cannot obtain convincing evidence from the original invalidation evidence provided by the petitioning party due to credibility or relevance issues with the original evidence, the court may ex officio investigate auxiliary or supporting evidence related to the original evidence based on the public interest. 

The Patent Act provides that an invention will not be patented if the invention can be easily made by a person ordinarily skilled in the art based on prior art, which corresponds to 35 USC 103 (obviousness) in the United States. The Supreme Administrative Court also held that 'prior art' is not limited to the original evidence submitted by the petitioner, but includes common knowledge that existed before the filing date of the invention owned by a person having ordinary skill in the art to which the claimed invention pertains (Supreme Administrative Court Judgment 105-Pan-Ji-41).

In this case, the IP Court ex officio found two patent documents published before the filing date of the invention as auxiliary evidence, and ruled that the auxiliary evidence can prove that the technical features not disclosed by the original invalidation evidence were common knowledge in the field of the invention. Thus, the IP Court held that the invention could easily be made by a person of ordinary skill in the art based on the original invalidation evidence and common knowledge. The Supreme Administrative Court reviewed the IP Court’s decision and held that the IP Court may, ex officio, investigate auxiliary evidence within the scope of the original invalidation evidence.

This judgment is based on Article 75 of the Patent Act, which stipulates that “when conducting invalidation proceedings, the Intellectual Property Office may, ex officio, examine the reason(s) and evidence not submitted by the party who brought the invalidation action but which is within the scope of the cancellation statement, and TIPO may notify the patentee and request a response within a specified time period”. However, this holding broadens the scope to which the principle of ex officio power may be applied.

Another important point to watch is the difference between common knowledge (which is within the scope of the original invalidation evidence) and new evidence (which is beyond the scope of the original invalidation evidence). In general, common knowledge is a well-known technique, such as that described in a technical dictionary, textbook or technical manual known in the prior art. In other words, a patent document would be regarded as new evidence rather than common knowledge, even if the filing date of the patent document is earlier than that of the patent at dispute. However, in this case the court ex officio investigated two patent documents to prove that some features in the claims were common knowledge. It will be interesting to see whether the courts make further rules to clarify the difference between common knowledge and new evidence in the future.

Recently the Supreme Administrative Court clearly held that the party which files a cancellation action must provide “clear and convincing evidence” to prevail on an invalidity claim (Supreme Administrative Court Judgment 105-Pan- Ji-333), which is likely affected by US theories. However, as both the Patent Act and the Administrative Procedure Code adopt the principle of ex officio power, it is not unreasonable for the Supreme Administrative Court to hold this opinion.

However, the trend of the new cancellation system is moving towards an affair between the patentee and the party who filed the cancellation action, with the Taiwan IP Office not being involved in the trial. It will also be interesting and worth watching to see whether the courts will make any further use of the principle of ex officio power in the future.

This article first appeared in IAM. For further information please visit www.iam-media.com.