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Can New Invalidation Reasons Be Added Based On the Same Evidence in Patent Invalidation Administrative Proceedings?

Hsiu-Ru Chien/Shih-I Wu

The current Patent Act provides that the reasons and evidence for an invalidation action shall be provided prior to rendering a decision (Paragraph 4, Article 73 of the Patent Act).  Hence, in principle, a patent invalidation requester is not allowed to supplement additional "invalidation evidence" or "invalidation reasons" during the phase of administrative appeal or administrative litigation proceedings.  However, as a result of said provision, the patent invalidation requester can still file another invalidation action against the same patent based on new evidence not presented in the administrative litigation after the administrative judgment is final and binding.  This would trigger another administrative litigation procedure.  In order to avoid repeated administrative litigation procedures, Paragraph 1, Article 33 of the Intellectual Property Case Adjudication Act (hereinafter referred to as the "Adjudication Act") stipulates that the Intellectual Property Court shall still take into account any new evidence submitted on the same invalidation reasons prior to the end of the oral debate proceedings.  This provision, however, merely relaxes restrictions on the timing of presenting "invalidation evidence," butnot the timing of presenting "invalidation reasons."
Since the Adjudication Act came into effect in 2008, the aforesaid provision has been in operation for years without particular questions. The Intellectual Property Court, however,loosely construed the aforesaid provision inits 2016-Xing-Zhuan-Su-No. 60 administrative judgment delivered in April, 2017In such case, the patent invalidation requester claimed in the invalidation phase thatthe patent at issue lacked "an inventive step" over a combination of Evidence A and Evidence B; and in the subsequent administrative litigationproceedings, the requester added that the patent at issue lacked "novelty" over Evidence A.  The Intellectual Property Court then opined that the Intellectual Property Office had conducted an examination on the entire technical content of Evidence A during the invalidation phase, and thus the added claim did not impact the patentee's right or delay the litigation.  Moreover, it was normal to examine the novelty of a patent prior to investigation into whether the patent lacks an inventive step.  Consequently, the added claim is deemed as a "transfer and downgrade" of the arguments on the patentability of the patent at issue. Additionally, the requester did not present new evidence, and therefore there was no need to consider any interactive and synergistic effects among the evidence, and the scope of the trial could thus be narrowed.  Accordingly, the Intellectual Property Court permitted the requester to add the claim for "novelty" on the basis of Evidence A.
The aforesaid opinions of the Intellectual Property Court increase the likelihood to add issuesin the administrative litigation proceedings of patent invalidation actionsSuch opinions are of significance if the identity of evidence, the hierarchical relationship between the elements of novelty and inventive step in the process of patent examination, and the pursuit of a litigation system that "solves disputes once and for all" are taken into consideration.  However, after an appeal was filed, the Supreme Administrative Court is of a different opinion. On January 18, 2018, the Supreme Administrative Court entered the 2018-Pan-No. 36 administrative judgment, ruling that the added claim for novelty shall not be permitted pursuant to the requirement set forth in Paragraph 1, Article 33of the Adjudication Act.  The reason is that novelty and inventive step are different elements for patentability with different requirements set forth in the Patent Act; since novelty and inventive step shall be deemed as different reasons for patent invalidation, the new argumentation regarding novelty could not be added in this litigation.
Given the above, in accordance with the clear requirement set forth in Paragraph 1, Article 33 of the Adjudication Act, in order to avoid similar procedural disputes, patent invalidation requesters should prudently assess invalidation reasons so as to prevent any legal risks from arising due to late submission of invalidation reasons.