Newsletter
The Supreme Administrative Court Ruled Again on Whether Invalidation Petitioner as Intervener Can Submit New Evidence in Administrative Lawsuit
In order to promote one-time resolution of disputes, avoid repetitive disputes over the validity of the same trademark or patent right, and prevent repetitive invalidation petitions and administrative lawsuits, Paragraph 1, Article 33 of the Intellectual Property Case Adjudication Act (hereinafter referred to as the “Adjudication Act”) stipulates that a Party still can submit new evidence in the administrative lawsuit after the invalidation action on the same grounds for invalidation. However, what the said "Party" in that provision refers to is controversial in practice.
The Supreme Administrative Court’s 2011 Pan Zi No. 2247 judgement made on December 22, 2011 took a more restrictive interpretation on the foregoing issue. It was held that only “invalidation petitioner as plaintiff” can submit new evidence on the same grounds for invalidation in an administrative litigation. However, an observation of the trial practice of the Intellectual Property Court (IP Court) in recent years shows that, there seems to be a tendency to be more flexible on the scope of "Party." For example, in the 2016 Xing Zhuan Su Zi No. 97 judgment made on August 10, 2017, the IP Court held a different view from the Supreme Administrative Court's above judgment. Its rationale is as follows: The wording of Paragraph 1, Article 33 of the Adjudication Act was not limited to "only the invalidation petitioner as plaintiff." Further, in the case where the Intellectual Property Office (IPO) decides to invalidate the patent in dispute and thus the patentee files an administrative litigation, the position of the invalidation petitioner is the intervener in such administrative litigation. However, if the IP Court considers that the original evidence of the invalidation petition is insufficient to prove that the patent shall be cancelled but does allow the invalidation petitioner to submit new evidence, he/she would file another invalidation petition against the patent in dispute, which would later lead to another administrative lawsuit. The IP Court therefore held that the “Party” under Paragraph 1, Article 33 of the Adjudication Act does not exclude the circumstance where the invalidation petitioner is the intervener.
Nevertheless, upon the appeal of this case, the 2018 Pan Zi No. 391 administrative judgment made by the Supreme Administrative Court on July 12, 2018 maintained the same position with the above-mentioned 2011 Pan Zi No. 2247 judgement.
First of all, the Supreme Administrative Court held that the formulation of Article 33 of the Adjudication Act could not eventually achieve the purpose of one-time resolution of disputes over the validity of patent rights. According to Paragraph 1, Article 33 of the Adjudication Act, new evidence may only be submitted "on the same grounds for the cancellation." Although it can avoid the problem where the same invalidation petitioner submits different evidence on the same grounds for cancellation, it is unable to prevent repetitive administrative litigations in the form of the same invalidation petitioner filing invalidation petition on different grounds for cancellation, or a different invalidation petitioner filing invalidation petition with different evidence on the same grounds for the cancellation. Secondly, in the case where IPO invalidates the patent and the patentee then files an administrative litigation accordingly, the decision of patent cancellation would substantively remain in force during the litigation proceeding, and the IPO will not accept the patentee’s application for amendment in response to the invalidation petitioner's new evidence. If he/she is allowed to submit at this stage, the patentee’s offensive and defensive status in the lawsuit proceedings would be unequal. The Supreme Administrative Court further considers that the examination period for the IPO to close a patent invalidation action is 15 months in average, and the trial period for the IP Court to close an administrative lawsuit is 180 to 230 days, much faster than the former, and clearly, the time for the patentee to decide whether to apply for amendment while the invalidation petitioner submits new evidence in the administrative lawsuit proceedings is more pressing than the examination period of the invalidation petition against patent. In order to equate the procedural and substantive rights of the patentee and the invalidation petitioner, the Supreme Administrative Court has reaffirmed that the provisions of Paragraph 1, Article 33 of the Adjudication Act should be defined with a restrictive interpretation. The "Party" who may submit new evidence in the administrative lawsuit on the same grounds for invalidation shall refer to an "invalidation petitioner as plaintiff."