A.Article 23 of the Patent Act stipulates that “Where an invention claimed in a patent application for invention is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, an invention patent shall not be granted.” This article was added when the Patent Act was amended on October 24, 2001. The reasoning of the amendment is that “ . . . the earlier-filed patent exists before the latter-filed application. To ensure the spirit of first-to-file principle, the earlier-filed patent belongs to the scope of novelty review and the latter-filed application cannot be granted.” The ordinary meaning of the texts does not specify whether its scope of application is limited to the earlier- or latter-filed application in the territory of this country.

B.Patent rights are territorial, and their protection is provided by domestic law that grants the rights. A patent right that is granted by one country may not be able to be asserted in another country. Article 4 of the Patent Act (the Patent Act that was applicable when the disputed patent was reviewed) stipulated that “A patent application filed by a foreign applicant shall not be accepted if the home country of such foreign applicant is not a signatory to an international treaty for protection of patent right to which the Republic of China (ROC) is a signatory, or if the home country does not conclude with the ROC a treaty or an agreement for reciprocal protection of patent rights, or if no patent protection agreement is concluded by and between organizations or institutions of the ROC and said foreign country and approved by the respective competent authorities, or if the laws of said foreign country do not accept patent applications filed by ROC nationals.” Article 5 paragraph 1 stipulated that “The term ‘right to apply for a patent’ shall mean the right to file a patent application in accordance with this Act.” Accordingly, the patent protection of foreigners requires the patent to be filed in the Republic of China (ROC) and to be granted according to the Patent Act of this country. Therefore, “an invention or utility model which is laid open or published after the filing of the later-filed patent application” stipulated in Article 23 of the Patent Act (the Patent Act that was applicable when the disputed patent was reviewed) refers to the filing and publication in this country without extending to other nations.

C.The defendant claimed that: Article 2 of the January 22, 1959 Patent Act stipulated that “The new invention referred to in this Act is the one except for the following: A. the invention was disclosed in a printed publication or used publicly ‘domestically’ prior to the filing of the patent application and others may copy it . . . ,” which limits the scope of publication to domestic ones. On the contrary, Article 2 of the Patent Act, amended on April 16, 1979, stipulated that “The new invention referred to in this Act is the one except for the following: A. the invention was disclosed in a printed publication or used publicly prior to the filing of the patent application and others may copy it . . . .” The new provision removed the domestic scope, and the reasoning was “to introduce foreign patent technology, to improve the technical level of the domestic industry, and to attract foreign investment.” Similarly, later revisions did not contain the domestic scope, i.e., : Article 20 Paragraph 1 of the Patent Act, amended on January 21, 1994 stipulated that “the new invention referred to in this Act is the one except for the following: A. the invention was disclosed in a printed publication or used publicly prior to the filing of the patent application”; Article 20 Paragraph 1 of the Patent Act, amended on October 24, 2001 stipulated that “Where an invention claimed in a patent application for invention is identical to an invention or utility model disclosed in the description or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, an invention patent shall not be granted.” The defendant therefore argued that historic and systemic interpretation requires that the application of the Article 23 of the Patent Act cannot be limited to the situation where both the earlier-filed and latter-filed applications to be filed in this country to avoid inconsistency with the reasoning of the amendment and the system of the legal provision.

D.However, the respondent confused the novelty requirements under the January 1, 1959, April 16, 1979 and January 21, 1994 provisions with the secret prior art provision under the October 24, 2001 regulation. On the one hand, the deletion of domestic scope of the Patent Act with regard to novelty requirement is an adoption of absolute novelty principle. Accordingly, prior arts that are disclosed in a domestic or foreign patent specification or drawing(s) that are not part of the inventions being filed become publicly known or used technology. It is not limited by geographic scope and the novelty requirement is therefore not met. On the other hand, under the secret prior art provision, the earlier-filed patent that was laid open or published later cannot become prior art of the later-filed patent as the invention did not become public. Therefore, the domestic limitation of the Article 23 of the Patent Act is not contradictory to the patent law system and the reasoning of the amendment. The defendant’s claim is groundless.

Absolute novelty, Loss of novelty, Loss of legal fictitious novelty