Newsletter
Patentees Should Make an Early Evaluation of the Necessity to Amend Claims
In an invalidation action, the patentee may, depending on the reasons for the invalidation and the strength of overall evidence, file an application to the Intellectual Property Office (the TIPO) for making amendments pursuant to Article 67 of the Patent Act. If the TIPO recognizes the validity of the granted patent and renders a decision dismissing the invalidation action, the invalidation petitioner can first initiate an administrative appeal and then file with the Intellectual Property Court an administrative litigation. During the administrative litigation process, the invalidation petitioner (as a plaintiff) may present new evidence on the same grounds to support and thus strengthen the reasons for the invalidation pursuant to Article 33 of the Intellectual Property Case Adjudication Act. Previously, when the Court considered that the disputed patent was proven unpatentable by the new evidence, in order to balance the interests of the two parties involved and to respect the right of the TIPO to make the initial decision on the new evidence, the Intellectual Property Court would usually revoke the original decision issued by the TIPO and remand for re-examination, so that the patentee may file an application for making claim amendments in response to the new evidence. Such practices were once endorsed by the Supreme Administrative Court, as can be seen in the 2011 Pan-Zi No.1820 judgment.
However, the aforementioned practices have been adjusted by the Supreme Administrative Court in the resolution of its 1st Joint Conference of Presiding Judges (2) held in April 2015. The resolution provides that the Intellectual Property Court shall enter a judgment to order that the TIPO invalidate the granted patent right under the circumstances that the Court considers the original evidence submitted during the invalidation procedure or the new evidence presented by the invalidation petitioner during the administrative litigation sufficient to determine the disputed claims unpatentable and that the patentee fails to file an application with the TIPO for making claim amendments and report such application to the Court before the end of the final debate hearing.
In the 2014 Xing-Zhuan-Su-Zi No. 69 judgment entered by the Intellectual Property Court on January 15, 2015, the Court, based on new evidence provided by the invalidation petitioner, revoked the TIPO's original decision and remanded the case to the TIPO for a new decision. Upon an appeal against the aforementioned judgment, the Supreme Administrative Court revoked the Intellectual Property Court's judgment in its 2015 Pan-Zi No.559 judgment entered on September 24, 2015, holding that the Intellectual Property Court should not merely revoke the TIPO's original decision but should directly order the TIPO to invalidate the granted patent right. After the aforementioned case was remanded, the Intellectual Property Court made a new judgment on April 7, 2016, numbered 2015 Xing-Zhuan-Geng-(1)-Zi No.8, ordering the TIPO to invalidate Claims 1 to 4 (i.e. all claims) of the disputed patent. Meanwhile, even though the invalidation petitioner was granted a fully favorable judgment, the Intellectual Property Court requested it to bear half of the court costs because it failed to timely present the evidence sufficient to invalidate the disputed patent until the administrative litigation had started.
The aforementioned resolution made by the Supreme Administrative Court at its 1st Joint Conference of Presiding Judges (2) held in April 2015 has become important principles in a patent invalidation administrative litigation, especially for Patentees. In other words, even if the TIPO's decision for the invalidation action is in favor of the patentee, the patentee should actively evaluate the necessity to file an application for claim amendments and take actions as soon as possible when the new evidence provided by the invalidation petitioner during the administrative litigation is found to have a high risk, so as to reduce the possibilities of the court to enter a judgement to invalidate the granted patent right.