TIPS^®  Taiwan Intellectual Property Special

Application of Res Judicata Should Follow the Administrative Procedure Law

The Patent Paw provides that “where an opposition or invalidation action is not sustained after examination, no one shall be allowed to institute a new invalidation based on the same facts and the same evidence.” Two separate invalidation actions were brought against the utility model patent at issue (UM at issue) here on May 27, and December 8, 1998 (“Invalidation I” and “Invalidation II” respectively), citing the same evidence. The TIPO determined that the evidence was not sufficient to bar the novelty and non-obviousness of UM at issue, and dismissed Invalidation I on July 10, 2000. The Invalidation I was not appealed thereafter and the decision became final. However, based on the same evidence, the TIPO sustained Invalidation II and nullified UM at issue on August 2, 2003. The UM patentee filed an administrative appeal and later appealed to the Administrative Court.

Taipei High Administrative Court ruled that, at the time Invalidation II was instituted, Invalidation I was still pending, and there was no final decision. Therefore, “res juducata” is not applicable here. Later, the TIPO determined that the evidence cited was not sufficient to invalidate UM at issue, and the decision became final because the Invalidation I was not appealed. However, in Invalidation II, the TIPO reached a totally opposite conclusion, by citing the same evidence, that the UM at issue is lack of novelty and non-obviousness. According to the Administrative Procedure Law, while changing a previous final decision, the administrative body, i.e., the TIPO, should specify the reasons in detail for the change. However, the reasons were not provided. The decision was made in violation of the Administrative Procedure Law, and therefore shall be vacated.