I. Overview
Individual inventors or companies usually adopt an exclusively defensive approach in building their patent portfolio by focusing on the development of technologies and applying for patents to protect their inventions and prevent others from infringing their patents. However, obtaining a detailed understanding of the technological progress of competitors is equally crucial to fully predominate a particular market segment or technical field. This can be achieved by regularly monitoring the publications of inventions and checking whether competitors are applying for related patents or there are notable new publications in a related field.
For a published patent application, if a third party considers that the claimed invention is not patentable, a third-party observation may be submitted during the time period from the publication date of the patent application until the granted date, so that the examiner may review the content of the third-party observation and potentially reject the patent application. Furthermore, after a patent application is granted, the patent right can still be revoked by the Taiwan Intellectual Property Office (TIPO) if a third party files an invalidation action.
II. Filing a third-party observation
According to Article 39 of the Enforcement Rules of the Patent Act, prior to an examination decision being rendered, any person considering that the claimed inventions shall not be granted may submit observations to the Specific Patent Agency, along with reasons and document(s) of proof.
Therefore, anyone can submit a third-party observation from the filing date of an invention patent application until the granted date of the application, that is, as long as the application is under examination at the TIPO. Except for applicants themselves, other parties have no way of knowing the details of an invention patent application before the invention patent application is published, and accordingly there is no way to file a third-party observation before an invention patent application is published and interested parties must exclusively rely on the pre-grant Patent Gazette laid-open by the TIPO to file third-party observations.
For this purpose, it is advisable to regularly monitor invention patent applications laid-open in the pre-grant Patent Gazette by selecting the international patent classification code when searching on the website of the TIPO, such as subclass H01L, main group H01L23 or group H01L23/60, to determine relevant technical fields. In addition, searching for a specific applicant or inventor can also cover areas of interest.
In order to implement the provisions of Article 39 of the Enforcement Rules of the Taiwan Patent Act, the TIPO has formulated regulations for third-party observations on invention patent applications. Accordingly, any person other than the invention patent applicant, prior to an examination decision of the invention patent application being rendered, who considers that the invention patent application violates the provisions of Article 46 of the Patent Act and should not be granted a patent, may present arguments against the invention patent application before the TIPO, that is, file a third-party observation.
On the other hand, in order to protect the rights and interests of applicants of invention patent applications, after submission of a third-party observation, the TIPO will notify the applicant(s) of the invention patent application in question that a third-party observation has been filed. In response, invention patent applicants can apply for reviewing the file wrappers of the invention patent application according to the regulations of the patent file wrapper review and check the content of the third-party observation. After receiving the observations, the TIPO will decide whether to adopt the observations based on whether the content is specific and clear and sufficient to establish valid citations. In addition, since the third party is not a party to the invention patent application, the TIPO will not notify the third party of the handling of the third-party observation or the examination results of the invention patent application.
In this regard, Article 41 of the Patent Law stipulates: “An invention patent applicant may, after the publication of an invention patent application, claim appropriate compensation against the exploiter who, having been given a written notice by the applicant in respect of the contents of the invention after the laying-open of the invention patent application, continues to commercially exploit the invention after receiving the notice and prior to the publication of the said application.” Therefore, if a third party has received a written notification of the content of an invention patent application after the publication of the application, if said party intends to continue to commercially implement the technology of the application, searching for citations sufficient to prove that the application is unpatentable may be considered, and a third-party observation may be put forward to prevent the applicant from requesting compensation after obtaining the patent. Applicants should at least actively narrow the scope of claims during the prosecution process, so that the commercially implemented technology does not fall within the scope of the finally approved patent claims.
Even if a third-party observation cannot be adopted by the examiner to directly issue a notice of disapproval, the examiner may be prompted to combine the current citations and the citations of the third-party observation to formulate an evidence-based rebuttal for the invention patent application, and thus the purpose that the invention patent application is not granted a patent may still be achieved. Therefore, in addition to domestic and foreign patent publications that examiners usually include in their search, providing reference documents in a third-party observation that are not frequently searched by examiners may also be a promising approach to ensure that an invention patent application will not be patented.
In addition, if an examiner can be prompted to adopt a third-party observation and issues a notice of disapproval based on the third-party observation, even if the applicant finally obtains the patent after narrowing the scope of the claims through a claim amendment, the applicant can only obtain a patent that does not pose a threat and the amendment is subject to estoppel, which is still beneficial to the party that filed the third-party observation.
Moreover, for a third-party observation to be successful, the publication dates of the cited documents need to be clear to be adopted during examination. If the publication date of a cited document is uncertain, it will not be admissible and a document certifying the publication date of the cited document must be included. Furthermore, for documents that are not written in Chinese or English, translations must be provided when submitting a third-party observation. Besides, if the identity of the submitter of a third-party observation should remain confidential, the third-party can choose not to agree to disclose any personal information. A further notable advantage is that there are no fees for submitting third-party observations.
III. Filing an invalidation action
In addition to third-party observations at the prosecution stage of an invention patent application, another approach is to invalidate a patent by filing an invalidation action after the patent is granted. After an invention patent application is granted and as long as the patent remains valid, any person may request for an invalidation action against the patent with the Specific Patent Agency in accordance with Article 71 of the Patent Act during the patent term. In addition, according to Article 72 of the Patent Act, where an interested party possesses recoverable legal interests due to the revocation of a patent, the interested party may still file an invalidation action after the patent has become extinguished. In addition to filing an invalidation action on the grounds that the claims of a patent are not novel or inventive, it is also possible to cite the grounds that the claims of a patent lack novelty based on legal fiction, the specification of the patent is not sufficient for the invention to be understood and carried out by a person ordinarily skilled in the art, the claims are not supported by the specification, the claims do not meet the first-to-file principle, amendments to the claims are beyond the scope of the original disclosure, or supplemented Chinese text is beyond the scope of the disclosure of the originally-filed application, etc. when filing an invalidation action.
The advantage of this method is that because the patent has been approved, if cited documents and arguments are proposed to invalidate the patent at this time, the patentee can only make post-grant amendments so that the patent will not be revoked. However, in accordance with Article 67 of the Patent Act, when an invention patentee applies for post-grant amendments of the specification, claims or drawings of a granted invention patent, only the following amendments may be conducted: 1. to delete claim(s); 2. to narrow down the scope of claim(s); 3. to correct errors or translation errors; and 4. to clarify ambiguous statement(s). In addition, the post-grant amendments shall not substantially enlarge or alter the scope of the claims as published.
While in response to a third-party observation at the prosecution stage, a request to amend the specification, claims or drawings can be filed as long as the content of the amendment, except for the correction of mistranslation, does not exceed the scope disclosed in the specification, claims or drawings at the time of filing the invention patent application, post-grant amendments in response to an invalidation action are subject to the abovementioned limitations. Therefore, post-grant amendments made during an invalidation action are considerably more restricted than amendments in response to a third-party observation and accordingly it is more difficult to amend the specification, claims or drawings by filing post-grant amendments to avoid patent invalidation than by filing amendments during the prosecution process. However, to determine whether it is more beneficial to submit third-party observations at the prosecution stage or file an invalidation action after the patent is granted, the drafted content of the claims and the disclosed content of the specification of the invention patent application and the content of the expected cited documents should be reviewed to anticipate possible amendments adopted by the applicant and minimize the scope of the opponent's patent rights or even make it impossible to obtain a patent.
IV. Conclusion
In the highly competitive field of intellectual property protection, in addition to actively applying for patents and constructing patent protection webs, it is also important to proactively attack invention patent applications to prevent competitors from obtaining patents or only allow them to obtain patents that do not pose a threat in order to combine both offensive and defensive strategies to win patent wars. In this context, making extensive use of third-party observations and invalidations is very helpful in preventing competitors from obtaining patents.
*Patent Agent, Assistant Manager of International Patent Division at Tai E International Patent & Law Office
