TIPS^®  Taiwan Intellectual Property Special

The Evidence of “Publication” in Patent Opposition or Cancellation Cases

The Patent Law provides that an invention is not patentable if, prior to applying for patent, such invention has been published or put to public use and thus bars to the novelty requirement. In practice, the Patent Authority, Taiwan Intellectual Property Office (TIPO) and Committee of Administrative Appeal, Ministry of Economic Affairs (MOEA), will only review the evidence of publication or public use raised by the opposition petitioner. Therefore, it is crucial in patent trial case (including opposition, invalidation and cancellation) to realize what kind of evidence proves the “publication” and/or “public use.” We hereby summarize some cases and its evidence which has been weighed to determine the novelty requirement by the competent authority as follows:

1. The petitioner alleged that the invention has been published in Chinese version in 1992 and thus lacks of novelty, because such publication indicates “Copyright © 1992.” The patentee argued that this Publication was distributed in 1994 instead of 1992. With respect to the copyright declaration only identifies the date of editing and compilation rather than publication. The patentee's argument was recognized by the MOEA (See January 29, 1999, MOEA 88-Sue-88630336, Administrative Appeal Decision).

2. In contrast, the MOEA held in another opposition case that, if an invention was disclosed in a U.S. article/publication, the copyright declaration “Copyright © year” can serve as an evidence of the date of disclosure. The Administrative Court held in two judgements (83-2379 and 86-3231) that the copyright declaration marked in a U.S. article/publication shows the date of publication pursuant to the old U.S. Copyright Act. Therefore, the U.S. article can serve as an evidence to support the petitioner’s opposition case. (See February 25, 1999, MOEA 88-Sue-88630834 Administrative Appeal Decision).

3. Tai-Sue-06309 Re-appeal Decision held that the date of the ratification for new drug by the Drug Administrative Office (similar to American FDA) can be deemed as the date of the disclosure of an invention. In the above Decision, the Patent Authority reasoned that normally, a new drug cannot distributed to the public unless and until the ratification by the competent authority; therefore, the date of the ratification can serve as an evidence of the disclosure.

4. For the same reasoning, the Administrative Court held that, the date which the inventor submitted his invention/product to the Bureau of Standard, the MOEA for test purpose can deemed as the date of disclosure of such invention (See January 28, 1999, 88-Pan-166 judgement). The Court articulated that, since the product can be sent for testing, the invention should be disclosed to the public or under public use.