Whatever administrative actions taken by the Taiwan Intellectual Property Office with regard to rejections of patent applications and decisions made in response to patent invalidation are deemed administrative actions taken by a central administrative organ. The Administrative Appeal Act, Article 1, Paragraph 1 provides that anyone whose right or interest was unlawfully or improperly injured by a center or local government agency’s administrative action is entitled to file an administrative appeal according to this Act. Patent-related administrative appeal processes aim to start the self-review and internal supervision carried out by a patent-related competent authority (Ministry of Economic Affairs) and a patent application examination authority (Taiwan Intellectual Property Office) and thus prepare for judicial examination of patent applications.
Regarding patent-related administrative appeals, decisions made by the Administrative Appeal Review Committee of the Ministry of Economic Affairs usually fall into the following categories: 1. the administrative appeals are justified, and thus the Administrative Appeal Review Committee rules that original sanctions are unlawful or inappropriate, thereby revoking the original sanctions or taking the liberty of changing the original sanctions; 2. the administrative appeals are unjustified, and thus the Administrative Appeal Review Committee issues written rejection decisions; and 3. the administrative appeals are dismissed on the grounds that the administrative appeals are filed after a statutory administrative appeal deadline or because any situation stipulated in the Administrative Appeal Act, Article 77, Item 8 occurs.
Decisions made on patent-related administrative appeals are administrative actions by nature. A written decision on patent administrative appeal states: if you are dissatisfied with this administrative appeal decision, you may file an administrative action with the Intellectual Property Court within two months from the day which follows the date of the delivery of this written decision. The Administrative Procedure Act, Article 106, Paragraph 1 provides: if a party concerned is dissatisfied with a decision made on a patent administrative appeal, the party concerned shall file a revocation action or an obligation-imposing action (Verpflichtungsklage) with the Intellectual Property Court within an invariable period of two months from the delivery of the written decision on administrative appeal; if the party concerned does not file the action before the aforesaid invariable period expires, the decision on administrative appeal shall be conclusive, and any remedy procedure arising from the original administrative action will terminate.
In the situation where an administrative appeal is justified, if the original sanction is examined and held to be unlawful or inappropriate, the Administrative Appeal Review Committee shall not only revoke the original sanction by a decision but also remit, as needed, the case to the Taiwan Intellectual Property Office for sanction or take the liberty of changing the sanction. If any legal opinion is expressly stated in the written decision on administrative appeal, the decision on administrative appeal will be binding on the Taiwan Intellectual Property Office under Article 95 of the Administrative Appeal Act.
The way a respondent institutes a remedy after a decision made on administrative appeal revokes an original sanction of allowed patent invalidation is hereunder explained with reference to an administrative judgment rendered on the case Year 2013 Xing-Zhuan-Su-Zi, No.80 and an administrative judgment rendered on the case Year 2009 Xing-Zhuan-Su-Zi, No. 81.
The administrative judgment rendered on Year 2013 Xing-Zhuan-Su-Zi, No. 80, relates to a case where an invention patent invalidation is allowed, and then a patentee and an invalidator institute a remedy procedure successively. The process flow of the case is described below. The invalidator instituted an invalidation action against an invention patent held by the patentee on the grounds that the patent violated Article 22-1-1 and Article 22-4 of the Patent Act in force at the time when the patent was issued. The case was examined by the Taiwan Intellectual Property Office which then rendered a sanction (the first invalidation ruling) of “not allowing the invalidation”. The invalidator was dissatisfied with the sanction and thus filed an administrative appeal. Afterward, the Administrative Appeal Review Committee revoked the original sanction (the first administrative appeal decision), and thus the administrative judgment got conclusive. The Taiwan Intellectual Property Office re-examined the case pursuant to Article 96 of the Administrative Appeal Act and with reference to the decision made by the Administrative Appeal Review Committee to thereby render a sanction (the second invalidation ruling) to rule that “the invalidation is justified and thus the patent must be revoked.” The patentee was dissatisfied with the sanction and thus instituted an administrative appeal. Afterward, the Administrative Appeal Review Committee rendered a rejection decision (the second administrative appeal decision). The patentee was dissatisfied with the rejection decision, and thus the patentee filed an administrative action with the Intellectual Property Court.
In the verdict of this case, the Intellectual Property Court holds: the conclusive decision on administrative appeal in this case is binding on all related government agencies; in this case, upon revocation of the original administrative action, the original administrative action government agency must abide by the decision on administrative appeal when rendering a sanction anew and inform the administrative appeal government agency of the result in writing, as expressly provided in the Administrative Appeal Act, Article 95 and Article 96; however, although the conclusive decision on administrative appeal in this case is binding on related government agencies, exclusive of administrative courts; the decision on administrative appeal revoked the original sanction; afterward, the original sanction government agency rendered a new sanction lawfully and stated in the written decision the legal basis of the revocation of the sanction; the party concerned was not dissatisfied with the decision on administrative appeal despite even though the decision on administrative appeal was unfavorable to the party concerned; however, the conclusive decision on administrative appeal is binding on related government agencies; nonetheless, in the situation where the original sanction government agency renders a new sanction in accordance with a decision on administrative appeal, and a concerned party which has received an unfavorable sanction disputes in a succeeding administrative action a point of dispute which the concerned party was not dissatisfied with in response to a preceding administrative appeal decision, the administrative court must still investigate and determine whether a reason for making the preceding conclusive administrative appeal decision is lawful, without being restricted by the rationale for the preceding conclusive administrative appeal decision.
The Intellectual Property Court holds that this case does not conform with any situation stipulated in the Administrative Procedure Act Article 107, Paragraph 7, Item 9, and thus rules that the conclusive first administrative appeal decision is not binding on any administrative action filed by the party concerned and directed to any new sanction rendered by the Taiwan Intellectual Property Office on the patent with reference to the first administrative appeal decision. Hence, the patentee in this case can file an administrative action at any one of two points in time: filing, within a statutory period from the issue date of the first administrative appeal decision, a revocation action with the Intellectual Property Court in response to a sanction rendered in connection with the decision on administrative appeal; and filing, after the Taiwan Intellectual Property Office has rendered a new sanction, an action of administrative remedy in response to the new sanction rendered by the Taiwan Intellectual Property Office. Hence, the patentee in this case may file an administrative appeal with the Administrative Appeal Review Committee, and then the patentee may file a revocation action with the Intellectual Property Court if the patentee is dissatisfied with an administrative appeal decision made by the Administrative Appeal Review Committee.
Under Article 95 of the Administrative Appeal Act, a conclusive decision on administrative appeal shall be binding on related government agencies. Therefore, the odds are that an administrative appeal decision made by the Administrative Appeal Review Committee will order the original sanction government agency to render an appropriate lawful new sanction and instruct the Taiwan Intellectual Property Office to conduct a re-examination in accordance with the administrative appeal decision. Hence, in this case, the ruling (the second invalidation ruling) rendered by the Taiwan Intellectual Property Office must be consistent with the first administrative appeal decision in terms of rationale and result on principle. The legal opinion stated in the first administrative appeal decision is definitely unfavorable to the patentee. If the patentee is dissatisfied with the first administrative appeal decision, the patentee may file an administrative action to institute a remedy procedure, with a view to speeding up administrative litigation and settling disputes over the patent.
However, being dissatisfied with an administrative appeal decision is not enough for a respondent to be eligible to file an administrative action. To be eligible to file an administrative action, the respondent must prove two things: the decision on administrative appeal rejects the respondent definitely; and the decision on administrative appeal jeopardizes the respondent’s right or legal interests.
The administrative judgment rendered on the case Year 2009 Xing-Zhuan-Su-Zi, No. 81, relates to a case where invention patent invalidation is allowed, and then a patentee and an invalidator institute a remedy procedure successively. The process flow of the case is described below. The invalidator instituted an invalidation action against an invention patent held by the patentee on the grounds that the patent violated Article 98-2-1 and Article 98-4 of the Patent Act in force at the time when the patent was issued. The case was examined by the Taiwan Intellectual Property Office which then rendered a sanction (the first invalidation ruling) of “allowing the invalidation”. The patentee was dissatisfied with the sanction and thus filed an administrative appeal. Afterward, the Administrative Appeal Review Committee revoked the original sanction (the first administrative appeal decision), and thus the invalidator filed an administrative action (the first judgment). The Taipei Administrative High Court rejected the invalidator’s administrative action. Afterward, the invalidator put forth a new argument and presented new evidence. In the face of the new argument and new evidence, the Taiwan Intellectual Property Office rendered a sanction (the second invalidation ruling) of “not allowing the invalidation” with reference to the first administrative appeal decision and the first judgment. The invalidator was dissatisfied with the sanction (the second invalidation ruling) and thus filed an administrative appeal. After reviewing the administrative appeal, the Administrative Appeal Review Committee revoked the original sanction and instructed the original sanction government agency to make a lawful new decision (the second administrative appeal decision). The invalidator was dissatisfied with the rationale, rather than the text, of the administrative appeal decision and thus filed an administrative action with the Intellectual Property Court.
In the verdict of this case, the Intellectual Property Court holds: In this case, the plaintiff filed an administrative action to impose a specific action obligation on an original sanction government agency, thereby causing the original sanction government agency to render a sanction of revoking a participant’s patent; the sanction of “not allowing the invalidation” rendered by the original sanction government agency is unfavorable to the plaintiff, and thus the plaintiff filed an administrative appeal against the sanction of “not allowing the invalidation”; and the text of the administrative appeal pleading states that the sanction of “not allowing the invalidation” must be revoked, and the utility model patent on 85201771 Flow-guiding Device must be revoked. The administrative appeal government agency, i.e., the defendant in this case, made the decision “revoke original sanction, instruct the original sanction government agency to render a lawful new sanction.” Hence, the original sanction was revoked by the defendant, not in a way unfavorable to the reason why the plaintiff filed an administrative appeal; Paragraph Two of the administrative appeal pleading filed by the plaintiff is neither allowed nor disallowed by the original decision expressly; instead, in response to Paragraph Two of the administrative appeal pleading filed by the plaintiff, the original decision instructed the original sanction government agency to render a lawful new sanction; hence, the result of the claim made by the plaintiff and stated in Paragraph Two of the administrative appeal pleading filed by the plaintiff remains undecided, and thus it is simply not true that the claim made by the plaintiff and stated in Paragraph Two of the administrative appeal pleading filed by the plaintiff was rejected to thereby allow the plaintiff to file an administrative action.
Hence, in the Intellectual Property Court’s opinion, the administrative action filed by the invalidator in this case against the second administrative appeal decision is unjustified, because the second administrative appeal decision revoked the original sanction of “not allowing the invalidation” and thus fulfills the purpose of administrative appeals without being unfavorable to the invalidator (who filed the administrative appeal). Even though the invalidator is disappointed with the legal opinion stated in the text of the administrative appeal decision, a new sanction to be rendered by the Taiwan Intellectual Property Office is not necessarily unfavorable to the invalidator. Under the Administrative Procedure Act, Article 5, Paragraph 2, an obligation-imposing action can be filed, only if the administrative action meets two criteria, namely the government agency rejects a case filed by the respondent lawfully, and the respondent’s right and legal interests are unlawfully infringed upon. The second administrative appeal decision revoked the original sanction without being unfavorable to the invalidator. Furthermore, the Taiwan Intellectual Property Office has not yet rendered any new sanction. Hence, it is simply not true that the respondent’s right or legal interests is infringed upon. Hence, in this case, it is only when the Taiwan Intellectual Property Office renders a ruling of “not allowing the invalidation” (the “would-be” third invalidation ruling) and the invalidator is dissatisfied with the third invalidation ruling that the invalidator can file an administrative appeal against the third invalidation ruling to thereby institute a judicial remedy procedure, though the invalidator must note whether the administrative appeal is precluded by the legal principle “protection against double jeopardy”.
In conclusion, a respondent may file an administrative action lawfully against an administrative appeal decision on an invalidation ruling, provided that the administrative appeal decision substantially infringes upon the respondent’s right or legal interests. Regarding the administrative judgment rendered on the case Year 2013 Xing-Zhuan-Su-Zi, No. 80, the first administrative appeal decision revoked the original sanction of “not allowing the invalidation” to the detriment of the patentee, and thus the patentee may file an administrative action against the first administrative appeal decision. Regarding the administrative judgment rendered on the case Year 2009 Xing-Zhuan-Su-Zi, No. 81, the second administrative appeal decision revoked the original sanction of “not allowing the invalidation” and thus conformed with the reason why the invalidator filed the administrative appeal. Even though the invalidator is disappointed with the legal opinion stated in the text of the administrative appeal decision, it is simply not true that the administrative appeal decision is unfavorable to the invalidator, and thus the action filed by the invalidator goes against the provisions about an obligation-imposing action. By contrast, the second administrative appeal decision is unfavorable to the patentee, and thus the patentee may file an administrative action against the second administrative appeal decision.
Therefore, it is only when a respondent is not only subjectively dissatisfied with a decision on administrative appeal but the decision on administrative appeal must also objectively infringe upon the respondent’s right or legal interests that the remedial purpose of filing an administrative action is fulfilled.