專利行政行為及其行政救濟之研究

Study on Patent Administrative Acts and Administrative Remedies thereof

系所名稱：法學院法律系 學位別：碩士 畢業學年：97年 指導教授：謝銘洋 專利法乃規範專利權之得喪變更及其行政救濟程序。其中專利權之取得與喪失及其行政救濟，涉及國家與專利申請人或專利權人間在行政法上之權利義務關係，而專利權取得後之侵害及其救濟涉及專利專利權人與第三人間在私法上之權利義務關係。本文著重於專利權之取得與喪失過程中，專利行政行為的定性及其行政救濟問題之探討。例如，以行政處分之效力為中心，藉由行政法相關概念，探討專利核准審定及舉發審定之效力與專利權間之關係，以及舉發審定確定前，專利權之民法上效力。關於專利舉發程序中，原核准審定之效力為何，本文認為，智慧財產局作成舉發審定即結合或取代原核准審定，惟依專利法第七十三條第二項之規定，其效力於舉發審定確定時始發生。換言之，關於專利權之效力，本文採法定解除條件說，認為舉發成立確定前，專利權之效力仍存續。準此，專利即使經舉發但尚未確定，專利權人仍得對其他侵害專利權者，依民事訴訟程序主張權利，惟，民事法院得依專利法第九十條規定，於舉發案確定前停止審判。因此可能導致舉發程序耗費時日。根據智慧財產案件審理法第十六條規定，若民事專利侵權案當事人提出專利權無效抗辯，民事法院應自行判斷，不適用相關停止訴訟程序之規定。另外，只要前舉發案尚未確定，專利權人亦得於他舉發案中，更正申請專利範圍，智慧局不得逕以系爭專利權已經舉發撤銷為由而否准該更正。根據智慧財產案件審理法第三十三條第一項規定，撤銷專利權之行政訴訟中，當事人於言詞辯論終結前，就同一撤銷理由提出之新證據，法院仍應審酌之。對之，對造當事人得否就原已核准申請專利範圍，提出更正申請，法無明文。基於公平原則，本文以為，法院亦應准許對造當事人就原已核准申請專利範圍，提出更正案，以資對抗。

The Patent Law regulates acquirement, extinguishment, and modification of a patent right and the further administrative remedy proceedings thereof. The acquirement, extinguishment, and modification of a patent right relate to the administrative rights and obligations between the applicant and the State, whereas the infringement of a patent right once issued and the remedy proceedings thereof involve the civil rights and obligations between the patent owner and the infringer. This thesis focuses on the characterization of the administrative actions during the procedures that a patent right is acquired, extinguished, and modified, and on the further administrative remedy proceedings of the characterized administrative actions. For example, how the cancellation decision is inter-related with the original allowance decision and the effect of a patent right is discussed based on the effectiveness of an administrative act (administrative disposition) by virtue of the concepts of the administrative law. And how the disputed patent right is effective in the Civil Law before the cancellation decision has become final.It is not clear whether the original allowance decision that issued the disputed patent right is effective or not during the cancellation proceedings. This thesis concludes that the cancellation decision that revokes disputed patent right rendered by the Taiwan Intellectual Property Office (TIPO) is substantially considered to merge or replace the original allowance decision that issued the said patent right rendered thereby when the said cancellation decision has become final according to Paragraph 2 of Article 73 of the Patent Law. In other words, this thesis considers the effect of a patent right is subject to a statutory resolutory condition when a cancellation action is pending so that the patent right is not effective until the cancellation decision rendered by the TIPO for revoking the said patent right has become final. Given the above, if the cancellation decision for revoking the patent right is made and still contestable, the patent owner still can exercise his(her) right against any would-be infringer during the civil procedures, but the civil court may suspend the judgment before the said cancellation decision has become final according to Article 90 of the Patent Law, thus making the cancellation proceedings time-consuming. Article 16 of the Intellectual Property Case Adjudication Law stipulates that when a party claims or defends that an intellectual property right shall be cancelled or revoked, the court shall decide based on the merit of the case, and the Code of Civil Procedure, Code of Administrative Litigation Procedure, Trademark Act, Patent Act, Species of Plants and Seedling Act, or other applicable laws concerning the stay of an action shall not apply. Also, as long as the former cancellation decision is still contestable, the patent owner is entitled to apply for correction of the claims of the allowed patent application during another cancellation proceedings for the disputed patent right. And the TIPO should not reject the application of the claim correction(s) on the grounds that the disputed patent right has been revoked by the former cancellation decision. In an administrative action concerning cancellation of a patent, the Intellectual Property Court should take into account any new evidence submitted by one party on the same grounds for the cancellation prior to the end of the oral argument in accordance with Paragraph 1 of Article 33 of the Intellectual Property Case Adjudication Law. In comparison, it is not clearly stipulated in the same Article whether the opposing party is entitled to submit claim correction(s) during the same procedure. This thesis suggests that based on the fairness doctrine between two parties, the IP court should allow and take in account the application of claims correction(s) submitted by the opposing party so as to balance the claim and defense measurements available for each of the two parties.