PROPORTIONALITY INVOKED IN PATENT ADMINISTRATIVE SUIT

09/01/2002

---

In a recent judgment in a patent-related admin-istrative suit, the Taipei High Administrative Court cited numerous provisions of the Admin-istrative Procedure Law as grounds for setting aside a decision of the Intellectual Property Of-fice (IPO) in which the IPO had ruled against the plaintiff. This judgment should greatly increase plaintiffs' prospects of success in similar suits. It represents a further development in plaintiffs' favor following the introduction of mandatory oral proceeding in administrative litigation.

In this judgment, the court stated that the plain-tiff's patent application had included 84 patent claims, but the IPO, in its opposition decision, had merely stated that claims 44 and 48 lacked novelty, and had given no specific explanation as to why the remaining claims were not patentable. The IPO should have first given notice to the plaintiff to delete claims 44 and 48 and their dependent claims within a specified period. Only if the plaintiff had been unwilling to amend the application should the IPO have ruled that the opposition should succeed in its entirety. But the IPO had not given the plaintiff any explanation, or any opportunity to amend the application be-fore making a decision against the plaintiff merely on the grounds that two independent claims did not meet the conditions for pat-entability. This not only ran counter to the leg-islative intent of the Patent Law of encouraging invention, but was also clearly not in accord with the principle of proportionality, and could be construed as an abuse of discretionary powers.

In the case in question, the court based its ruling on the provisions of the Administrative Proce-dure Law that forbid administrative agencies to abuse their discretionary powers, and require them to apply the principle of proportionality. This is the first time that the principle of propor-tionality has been invoked in a patent-related administrative suit. Under Article 7 of the Ad-ministrative Procedure Law, administrative acts must comply with the following principles:

The method employed must be conducive to achieving the intended purpose.

Where there is more than one means to achieve the intended purpose, the means should be chosen that involves the least harm to citizens' interests.

Harm caused by the means adopted must not be obviously disproportionate to the benefit of the intended purpose.

The court's intention in citing the principle of proportionality in the case was evidently to cor-rect the IPO's treatment of the plaintiff's patent application, in which only a very small number of claims did not meet the criteria for pat-entability. To achieve its purpose, the IPO could have chosen to direct the plaintiff to delete the unpatentable claims. The IPO had had available to it "more than one means to achieve the in-tended purpose," but by directly ruling that the opposition should succeed, it had chosen the means most harmful to the citizen's interests. This was indeed inappropriate.