經通國際智慧產權事務所

On May 24, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the priority claim of patent application no. 094121673 with the title of “An Apparatus and Method for Heterogeneous Chip Multiprocessors via Resource Allocation and Restriction” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Taipei High Administrative Court. In the said decision, the Court deemed the defendant’s decision of rejecting the said priority claim to be lawful because the appellant submitted the Chinese translation of the patent description to the defendant after the official deadline set by the defendant.

After filing the said patent application with the defendant on June 28, 2005, the appellant received an official notification from the defendant regarding the deadline of October 28, 2005 for submitting the Chinese translation of the patent description, diagrams and priority documents based on U.S. patent application no. 10/884,359. After two submissions (excluding the Chinese translation of the patent description and diagrams) on Aug. 17, 2005 and October 27, 2005, the appellant only submitted the Chinese translation of the patent description and diagrams to the defendant on December 12, 2005. Based on the fact that the appellant did not file a request for extension of time before the said official deadline and the priority date claimed by the appellant was July 2, 2004, the defendant rejected the appellant’s priority claim and assigned the application date of December 12, 2005 for the said patent application.

The Court examined the following arguments provided by the appellant,

The late filing of the Chinese translation of patent description for obtaining the priority right should be allowed. Thus, the defendant’s said decision of rejecting the appellant’s priority claim and reassigning the application date of the said application exceeded the allowed scope of the administrative discretional power.

According to Patent Examination Standards 1.1.2, if a request of extension of time is filed, late filing of the required documents within the 6 months from the filing of the request of extension of time should be allowed. Thus, the defendant’s ignorance of the appellant’s real intention and late filing of the required documents within the said period violated the principle of proportionality.

According to Article 98 of Civil Code, the real intention of the parties must be sought rather than the literal meaning of the words. Therefore, by concluding that the appellant did not file a request for extension of time for filing the Chinese translation of patent description and diagrams without recognizing the fact of that the real intention of the appellant was to maintain the said priority date, the defendant breached Article 98 of Civil Code.

Regarding the said arguments provided by the appellant, the Court noted that as the defendant issued an official notification to the appellant regarding the deadline of October 28, 2005 for submitting the Chinese translation of the patent description, diagrams and priority documents, and the appellant only submitted the Chinese translation of the patent description and diagrams after the said deadline without a request for extension of time, the defendant’s said decision of reassigning the application date of the said application did not violate the principle of proportionality or exceed the allowed scope of the administrative discretional power. In addition, the Court noted that because the letters issued from the representative/attorney of the defendant to the defendant did not contain any indication of the request for extension of time, the real intention claimed in the appellant’s arguments could not be concretely proved.

Based on the reasons above, the Court rejected the administrative lawsuit filed by the appellant.

Organized and translated by Jenny Yu

International Affairs