經通國際智慧產權事務所

On March 29, 2007, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the divisional patent application based on an invention application (with the title of “Medication for Autoimmune Disease”) filed on September 30, 2003 and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Taipei High Administrative Court. In the said decision, the Court noted that the even though there were two later filed patent applications with priority claims based on the said prior invention application, since the said prior invention application was still under the procedure of examination, the said divisional patent application should be accepted.

The defendant provided the argument of that, according to Article 29 of Patent Act, for a further patent application with priority claim based on a prior invention application in Taiwan, the prior patent application shall be deemed having been withdrawn after 15 months from its filing date. As the said divisional patent application was filed within 15 months from the filing date of the prior invention application, the defendant rejected the said divisional patent application based on the reason of that the prior invention application was not under the examination process. However, the Court noted that the said prior patent application should be under the suspended examination process within the said 15 months, and the defendant unlawfully rejected the said divisional patent application. The defendant also provided the argument of that accepting the said divisional patent application would destroy the ground for rejecting other requests including amendments of claims or diagrams of the prior invention application, and thus led to violation of the essence of priority claim. The Court noted that because of the priority claims of the two later filed patent applications, the said prior patent application was under suspended examination within the said 15 months and would be withdrawn when the said 15 months period ended. Otherwise, the suspended examination of the said prior patent application could only be resumed by withdrawing the two later filed patent applications. Thus, since the said amendments of claims or diagrams of the prior invention application could not possibly influence the scope of two later filed patent applications, the essence of priority claim would not be violated by accepting the said divisional patent application.

The Committee of Appeal of the Ministry of Economic Affairs’ reasons of rejecting the subsequent appeal included,

Accepting the said divisional patent application would violate the prohibition against repeated publication and examination.

According to Article 2.5.2.7 of Patent Examination Standards, if a prior invention application was basis for priority claim, in order to prevent the part of the technology of the prior invention not included in the later filed patent application from being withdrawn after 15 months from the filing date, a divisional patent application should be filed before the priority claim.

The Court noted that as set forth in Article 29-1 of Patent Act, if a further patent application with claim of priority based on a prior invention application was withdrawn, the said claim of priority was also deemed having been withdrawn, and the suspended examination of the prior invention application should be resumed. Therefore, accepting the said divisional patent application would not violate the prohibition against repeated publication and examination.

Based on the reasons above, the Court ordered to accept the rejected divisional patent application.

Organized and translated by Tony Chen

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