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IPO Invalidates a Patent Based on the Combinations of Evidence not Presented by the Patent Invalidation Petitioner, without Notifying the Patentee to Respond

Hsiu-Ru Chien/Shih-I Wu

Although a patent invalidation action is considered a type of public review system, it actually has the legal nature of private rights disputes in general. The patent invalidation petitioner therefore shall bear the burden of proof to provide reasons for the patent invalidation request (Paragraph 1, Article 73 of the Patent Act). With regard to patent invalidation proceedings, certain principles such as the disposition principle and the principle of issue sorting referred from the Taiwan Code of Civil Procedure are also adopted. However, the Patent Act still retains some characteristics of the principle of ex officio in patent invalidation proceedings. Article 75 of the Patent Act provides: "When conducting invalidation proceedings, the Specific Patent Agency may, by ex officio, examine the reason(s) and evidence not provided by the invalidation petitioner but within the scope of the invalidation claims, and notify the patentee to respond within a specific time period. The invalidation proceedings shall be conducted accordingly if the patentee fails to respond within the time period." However, when and to what extent should the Intellectual Property Office (the "IPO") conduct ex officio investigations and even take the initiative to explore reasons and evidence not provided by the patent invalidation petitioner? This has been a controversial issue for the practice of administrative laws in the patent field.
The Taiwan Supreme Administrative Court therefore expressed its opinion on the application and legal effects of "examination of the reason(s) and evidence not provided by the invalidation petitioner by ex officio" provided in Article 75 of the Patent Act in its 2016-Pan-No.610 judgment of November 17, 2016.
In this judgment, the patentee argued that combinations of evidence used by the IPO and the Taiwan Intellectual Property Court (the "IP Court") differed from the combinations of evidence presented by the invalidation petitioner while filing the invalidation action. To be specific, the IPO added the combination of "Exhibit 5" and other evidence, which were not asserted by the invalidation petitioner, to negate the validity of the disputed patent, but failed to provide the patentee with an opportunity to respond during the patent invalidation proceedings. The patentee therefore claimed that the IPO's original decision should be revoked. The Taiwan Supreme Administrative Court rejected such argument of the patentee in the abovementioned judgment.
According to the Taiwan Supreme Administrative Court, Exhibit 5 was not new evidence since it was already submitted by the invalidation petitioner to prove that other claims of the disputed patent were unpatentable when the patent invalidation action was filed. As for any adjustment to the presented combinations of evidence, it was a change of the means of attack or defense, different from submission of new evidence. Pursuant to Paragraph 1, Article 33 of the Intellectual Property Case Adjudication Act, the IP Court shall review any new evidence submitted prior to the end of the oral debate procedure. Therefore, the IP Court of course can examine any adjustment to the means of attack or defense concerning existing evidence.
The Supreme Administrative Court also pointed out: Disputes arising from the new combination of evidence were already raised during the appeal administrative proceedings and were listed among issues by the IP Court during the administrative litigation proceedings, and the patentee already made a complete argument against the said new combination of evidence during the litigation proceedings. In addition, an Administrative Court should investigate the fact, by ex officio, not restrained by assertions of the parties involved. Therefore, although reasons upon which the administrative agency made its decision were inadmissible, other reasons it illustrated during the litigation proceedings might still be considered legitimate if such other reasons already existed when the original decision was rendered, and therefore neither altered the nature of said decision nor undermined the litigation rights of the parties to present arguments in the litigation proceedings, but contributed to the findings of objective facts and the applications of laws by the court. The Supreme Administrative Court thereby dismissed the appeal filed by the patentee.
According to said judgment rendered by the Supreme Administrative Court, although Article 75 of the Patent Act regulates that should the IPO, by ex officio, invalidate a patent based upon the combinations of evidence not presented by the patent invalidation petitioner, the IPO shall fulfil its responsibility to notify the patentee to respond beforehand so as to protect the patentee's right of the audience, the defect resulting from the IPO's failure in performing said responsibility would not constitute a sufficient ground to have its decision be revoked as long as relevant evidence is already included in the files for the patent invalidation and the patentee is provided with an opportunity to respond during the administrative remedy proceedings.