Newsletter
PATENT EXAMINATION PRO-CEDURES MUST SAFEGUARD APPLICANTS' INTERESTS
In recent administrative litigation against the Intellectual Property Office (IPO), the US com-pany E. I. Du Pont (Du Pont) succeeded in re-versing an IPO decision rejecting a patent ap-plication filed by Du Pont.
In its judgment, the Taipei High Administrative Court reversed the IPO's decision, on the grounds that the IPO had failed in its duty of prior notification, under Article 40 Paragraph 2 of the Patent Act as then in force, to give prior notice of its intention to reject the application, and had failed in its duty of inquiry, under Arti-cle 44 of the then Act, in that it had not instructed Du Pont to attend an interview to clarify the content of the application; the first time that the IPO had stated its technological grounds for re-fusing the application was in its decision of re-jection. Du Pont was thus unable to present ex-planations or propose amendments in a timely manner. These procedural omissions has harmed Du Pont's interests.
The court also expressed doubt over the fact that the IPO's grounds for rejection, as stated in the decision of rejection, were based on the assertion that the patent specification submitted with Du Pont's application did not comply with the re-quirement under the Patent Act for "full disclo-sure", yet in its conclusion the IPO cited the un-related criterion of "industrial applicability" as its legal ground. At the end of the judgment, the court reiterated the principle of "claim-by-claim examination" and required the IPO to follow this principle.
This judgment marks an important development in protecting the rights of parties during patent examination procedures, and in enhancing the quality of examination.