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Taiwan: The importance of patent ownership continuity

According to Taiwan's Patent Law: "Where the owner of an invention patent has assigned his patent to a third party, the assignee shall have no standing against a third party, unless the assignment is duly recorded in the Patent Office." In this context, a ruling rendered by the Administrative Court in 2016 on an invalidation case sheds further light on the importance of observing patent ownership continuity.

In the invalidation case, the patent owner filed a post-grant amendment to the claims of the challenged patent so that the claimed invention may teach away from the prior art references cited by the invalidation petitioner. The IP Office, after conducting an examination, approved the post-grant amendment and, in turn, issued a decision to cancel only some of the claims of the challenged patent, and the decision was upheld by the Board of Appeals.

The petitioner then filed a petition for administrative litigation with the IP Court, raising the issue of patent ownership discontinuity and simultaneously questioning the patent owner's competence in filing the post-grant amendment.

The petitioner pointed out that, amid the three separate assignment recordals conducted in a row for the challenged patent owned by a transnational conglomerate, although the company names of the assignee in the second assignment recordal and the assignor in the third assignment recordal are in accord, the two companies were recorded as having different nationalities. Accordingly, the assignor in the third assignment recordal should not have any legal right to sign an assignment and the assignee, that is the patent owner, was not in a legal position to file a post-grant amendment.

The patent owner argued that the discrepancy in the nationality actually stemmed from a misprint and thus should not affect its right to file a post-grant amendment. However, in the absence of proof of negligence, the IP Court held that, due to the lack of the continuity in patent ownership, the patent owner was not entitled to file the post-grant amendment, and thus the validity of the challenged patent shall be determined based on the original allowed claims, rather than the amended claims. As a consequence, the IP Court rescinded the decision rendered by the Board of Appeals in favour of the patent owner, and remanded the case to the IP Office for re-consideration of the validity of the challenged patent.

This case suggests that an inadvertent negligence might result in an irreparable loss on the part of the patent owner.

Fiona C C Yin

Saint Island International Patent & Law Offices
7th Floor, No. 248, Section 3
Nanking East Road
Taipei 105-45
Taiwan, ROC
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377



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