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Can a Patent Invalidation Petitioner Agree with a TIPO Decision Upholding Patent Validity but File Administrative Suit Requesting the Court to Review New Evidence/New Arguments against Patent Validity

Any person is entitled to request the Taiwan Intellectual Property Office (hereinafter the “TIPO”) to revoke a "patent right granted by the TIPO" by submitting written arguments and evidence. This is what we call a "patent cancellation/invalidation action." After the IPO issues its decision for the cancellation/invalidation procedure, a party who is dissatisfied with TIPO’s decision can file an administrative appeal with the Appeal Committee of the Ministry of Economic Affairs (hereinafter the "Committee"), and can further initiate an administrative litigation to the administrative panel of the Intellectual Property Court (hereinafter the "IP Court") if the administrative appeal fails. Based on the principle that the powers of a legislature, an executive (an administrative authority), and a judiciary should be separate and balanced and general principles of administrative law, since the IP Court is a judicial division, it shall review in an administrative suit whether the decision made by an administrative authority (here referring to the TIPO or the Committee) is against the law; that is, the court conducts a "post-decision review." Should the decision violate the law, the IP Court shall, in principle, revoke the decision, and may order the administrative authority to make a new decision based on the requirements or opinions given by the IP Court's judgment. Therefore, the subject of the IP Court’s review in such administrative suit should be the TIPO’s decision on whether the patent in dispute should be revoked. According to the aforementioned principles, the administrative court, in the past, limited the scope of its review to the patent validity issues involved in the TIPO's decision (for instance, whether patent claims are supported by the specification and whether the patent lacks an inventive step) and the evidence already reviewed by the TIPO (for instance, prior art references that the invalidation petitioner submitted to the TIPO to prove that the disputed patent lacks an inventive step). The administrative court refused to review "new evidence" unless the newly presented evidence is for supplementing the evidence that the invalidation petitioner submitted during the invalidation action procedure.
However, Paragraph 1, Article 33 of the Intellectual Property Case Adjudication Act (hereinafter the "Act"), which came into effect in July 2008, provides that in an administrative litigation concerning cancellation or revocation of a registered trademark or patent, the IP Court shall take into account any new evidence submitted for asserting the same patent invalidity issue prior to the end of the oral argument proceeding. The legislative purpose is to allow an invalidation petitioner to submit new evidence for the court's review in order to reduce continuous administrative disputes caused by the same invalidation petitioner's continuous filing of invalidation actions and then administrative suits against the same patent through submission of new prior art references or asserting new combinations of known prior art references. After the enforcement of the Act, however, the role played by the administrative court has gradually expanded from performing the "post-decision review" to also actively participating in "initial review."
The most extreme case arising from Paragraph 1, Article 33 of the Act is that the court ends up involving itself solely in "initial review" instead of "post-decision review." For instance, a patent invalidation petitioner files an invalidation action together with supporting evidence to request revocation of a granted patent but the invalidation action is considered groundless by the TIPO. The petitioner, though in complete agreement with TIPO’s conclusion and opinions, then initiates an administrative litigation and presents new evidence or new combinations of prior art references which were not shown or submitted during the invalidation action, claiming that the new evidence and/or new combinations of prior art references are filed "for asserting the same validity issue for the cancellation or revocation" and no new invalidity issues (for instance, patent claims being unsupported by the specification and lacking an inventive step) are raised for the trial. The IP Court has to review the new evidence (exhibits) which the TIPO never took into consideration and come to a conclusion pursuant to Paragraph 1, Article 33 of the Act. There are already a number of similar cases in practice. For instance, in the 2015-Xing-Zhuan-Su-Zi-No.90 judgment, the IP Court concluded as follows: "The plaintiff submitted Exhibits 6 and 7 when initiating this administrative litigation and asserts that the combinations of the two new exhibits separately and respectively with Exhibits 1 to 5 submitted in the invalidation action prove that all patent claims (Claims 1 to 31) of the disputed patent lack an inventive step; the new evidence and new combinations of prior art references are found to be filed for asserting the same patent invalidity issue (that is, the new evidence is also for proving the disputed patent lacks an inventive step); this court therefore should review the new evidence pursuant to the aforementioned regulations. In addition, at the preparatory hearing, the court obtained the parties' consent to simplify the issues to be tried according to Article 132 of Administrative Procedure; the plaintiff agreed to give up those prior art combinations that were considered insufficient and groundless in the invalidation action and also in the subsequent administrative appeal." In other words, after the proceeding of simplifying/reducing the disputed issues to be tried, the IP Court excluded all the disputed issues involved in the TIPO’s decision as well as the prior art combinations that served as the basis of the TIPO's decision. The IP Court decided to focus on reviewing the new combinations of prior art references in terms of the inventive step issue asserted by the plaintiff (i.e., the invalidation petitioner). In fact, there are also cases where the plaintiff (the invalidation petitioner) voluntarily gave up all arguments raised in the invalidation action and requested the court to only review the new prior art combinations and render a judgment based on the new arguments presented in the administrative suit. The plaintiff's new claims included asserting the disputed patent violates Article 26 of the Patent Act regarding the requirement for definiteness; however, the plaintiff (i.e., the invalidation petitioner) decided to change his/her argument in this regard. In the invalidation action procedure, the plaintiff argued that feature A recited in a patent claim is not supported by the specification, but in the administrative suit, the plaintiff abandoned the argument regarding feature A and turned to argue that feature B in the same patent claim is not supported by the specification. The court accepted the plaintiff’s requests pursuant to Paragraph 1, Article 33 of the Act.
It can be seen from the abovementioned cases that a patent invalidation petitioner and also a plaintiff in an administrative suit can request the IP Court to ignore the administrative decision made by the TIPO and to conduct the initial review of the new evidence to render a judgment. Moreover, the currently effective Patent Act stipulates in Article 81 that if new evidence has been submitted to the IP Court for review pursuant to Article 33 of the Intellectual Property Case Adjudication Act and then considered groundless in the court's judgment, any person shall not be allowed to separately file an invalidation action against the same patent based on the same facts and evidence reviewed by the court. Therefore, the plaintiff (the invalidation petitioner) who has presented new evidence in the administrative litigation shall not, after an unfavorable judgment is announced and becomes irrevocable, file another invalidation action with the TIPO against the same patent based on the same "new evidence" reviewed by the court merely because the TIPO has never reviewed the said new evidence in any invalidation action procedure.
There is a related issue worthy of discussion: Under current practice, a post-grant amendment application filed by a patentee for amending patent claims during an invalidation action against the patent is deemed as one of the defensive manners for maintaining patent validity. However, in a subsequent administrative suit where new arguments and/or evidence are reviewed (including combinations of prior art references), should the patentee be equally given time to consider whether a post-grant amendment to the patent claims is necessary? May such a position on amendment even be implied by the court? (Note: when a patent invalidation action is reviewed by the TIPO, the patentee may be provided with opportunities to amend certain problems arising from unclear disclosure if it is possible to overcome such problems by amendments.) Is it appropriate to point out directly in a judgment that the patentee will not survive challenges brought against the validity of the disputed patent even with amendments to its claims? Such issue is still open for subsequent developments in judicial practice to address.