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Further Restrictions on Timing When Providing Invalidation Reasons and Evidence, and When Filing a Request for Post-grant Amendment of Invention Patent, as Stipulated in the Recently Implemented Amendment to Taiwan Patent Act and Patent Examination Guidelines
With the promulgation and implementation of the latest amendments to the Taiwan Patent Act on May 1 and November 1, 2019, Patent Examination Guidelines were also amended in accordance. The aforesaid amendments not only put further restrictions on both parties of invalidations for submission of respective brief(s) and evidence thereof, but also introduced new stipulations on windows in which a patentee can file requests for post-grant amendments.
According to Article 73, Paragraph 4, of the pre-amended Taiwan Patent Act, a petitioner of an invalidation action must submit supplemental brief(s) or evidence within a month after filling the invalidation action. However, as long as the supplemental brief(s) or evidence is submitted before a final decision is rendered, the submitted materials shall be considered by the Specific Patent Agency. The original intention of the aforesaid provision is to facilitate a full expression of the invalidation petitioner's perspectives and opinions. Therefore, the Specific Patent Agency is asked to consider any supplemental brief(s) or evidence submitted before a final decision is rendered. Nevertheless, it is common in practice for invalidation petitioners to continually submit new supplemental brief(s) and evidence by taking advantage of this mechanism, as well as patentees repeatedly submitting defense brief(s) as a counterattack, which can seriously delay invalidation proceedings.
To improve the efficiency of invalidation proceedings, Article 73, Paragraph 4 of the Taiwan Patent Act, newly amended in May 1, 2019, stipulates that a petitioner of an invalidation should provide supplemental brief(s) or evidence within three months after filing the invalidation action, and that supplemental brief(s) or evidence not submitted within the specific time limit shall not be taken into consideration. This restriction is also clearly prescribed in the newly amended Patent Examination Guidelines, with the exception of, in response to the needs of invalidation proceedings, Part V, Chapter 3, Section 3.1.2, which stipulates otherwise that after three months from the filing of the invalidation action, the petitioner may submit supplemental brief(s), evidence, or may make expression(s) for the invalidation action only under the following conditions: (i) after receiving a notification from Specific Patent Agency inviting the invalidation petitioner to comment on the post-grant amendments effected by the patentee, or (ii) after receiving a notification from Specific Patent Agency inviting the invalidation petitioner to provide comment for the purpose of investigating evidence or exercising the power of inquiry by the Specific Patent Agency. The invalidation petitioner is therefore allowed to submit supplemental brief(s), evidence, or to make expression(s) within one month after having been served with such notification. Still, unless a request for extension with adequate reasons has been filed and approved, these supplemental materials will not be taken into consideration if not submitted within the one-month time limit.
In addition to the restrictions set for the submission of the invalidation brief(s) and evidence by the invalidation petitioner, Article 74, Paragraph 2 of the newly-amended Patent Act also imposes restrictions on the submission of the defense brief by the patentee. As clearly stipulated in Article 74, Paragraph 2, the patentee is obligated to submit a defense brief within one month after receiving a notification with either a copy of the initially-filed invalidation action together with reason(s) and evidence, or with a copy of the supplemental brief(s) or evidence provided within three months after the invalidation action is raised. If the patentee fails to submit the defense brief in response to the notification on time, invalidation proceedings shall directly commence unless a request for extension with reasons has been filed and approved. From the standpoint of the Specific Patent Agency, the action to commence the invalidation proceedings merely means to initiate the invalidation proceedings so that the schedule thereof can be adequately managed. Nevertheless, if the patentee fails to submit defense brief(s) within the aforesaid specific period, these submitted materials shall still be examined by the Specific Patent Agency according to Part V, Chapter 1, Section 3.2.1 of the Patent Examination Guidelines.
Likewise, in response to the needs of invalidation proceedings, Part V, Chapter 3, Section 3.2.2 of the Patent Examination Guidelines stipulates that, after three months from the filing of the invalidation action, the Specific Patent Agency may, when deemed necessary, direct the patentee to submit a supplemental defense brief. The patentee shall reply within one month after having been served with such notification. Unless a request for extension thereof has been filed and approved, such supplemental defense brief shall not be taken into consideration if the patentee fails to act as required within the designated time limit.
For effecting a post-grant amendment by a patentee for an invention patent, Article 67, Paragraph 1 of the pre-amended Taiwan Patent Act originally allowed the patentee to file such a request at any time during the valid term of a granted patent. However, with the implementation of the newly-amended Patent Act, the timing for effecting a post-grant amendment applies to different stipulations depending on whether pending invalidation case(s) involved to the invention patent exists. Where there is no invalidation case involved, the patentee may still effect a post-grant amendment for the invention patent at any time within the valid term thereof (in accordance with Article 67, Paragraph 1 of the newly-amended Taiwan Patent Act). However, Article 74, Paragraph 3 clearly stipulates that during the invalidation proceedings, the patentee shall only effect a post-grant amendment for the granted invention patent in one of the following circumstances: (i) being compelled to submit a defense brief; (ii) being compelled to submit a supplemental defense brief, or (iii) being notified to submit a response. As an exception, effecting a post-grant amendment is free from the above restrictions if a litigation case involving the invention patent is pending. In detail, Part II, Chapter 9, Section 2 of the Patent Examination Guidelines further defines that the term “submit a response” means the patentee's response to a notification issued from the Specific Patent Agency indicating the reasons for not accepting the post-grant amendment already filed. The Patent Examination Guidelines stipulates that only under the aforesaid three circumstances, the patentee is allowed to submit a request for post-grant amendment within one month after receiving such notification from the Specific Patent Agency. Unless a request for extension with adequate reasons has been filed and approved, the post-grant amendment filed after the designated time limit will be disregarded. Nevertheless, given the special condition that if a litigation case involving the invention patent is pending, the Patent Examination Guidelines also clearly stipulates that the patentee is free from the above specific timing restrictions, and is allowed to effect post-grant amendment(s) for an invention patent during invalidation proceedings.
Given the aforesaid relevant stipulations in the recently Implemented amendment to Taiwan Patent Act and Patent Examination Guidelines, invalidation petitioners are bound to formulate their invalidation strategies in a more comprehensive way, and to prepare the relevant evidence in advance before resorting to filing their invalidation actions so as to avoid being overdue for the specific periods. For patent owners, as the timing for effecting post-grant amendment is in principle restricted (unless a litigation case is involved), they must evaluate the entire scenario more cautiously, and propose the adequate post-granted amendment of invention patent that not only overcomes the invalidation reasons but also achieves approval.