Newsletter
The Intellectual Property Office Issued a Q&A on the Examination Practice of the New Patent Act in force on November 1, 2019
The new Patent Act (hereinafter referred to as “2019 Patent Act”), which was in force on November 1, 2019, specifically sets stricter restrictions on the time when the two parties propose attack and defense methods in the invalidation procedure. The new regulation is stricter than the one in the old Patent Act in order to avoid the delay of examination and to improve the effectiveness of the invalidation examination. The relevant examination standards were released and in force on the same day. Nearly one year after the in force of the new Patent Act, the Intellectual Property Office collected common controversial issues in practice and issued the "Compilation of Q&A on Examination Practices of Patent Act Implemented on November 1, 2019" (https://topic.tipo.gov.tw/patents-tw/cp-909-883547-33d84-101.html) (hereinafter referred to as the “Q&A Compilation”) on November, 2020, to provide more detailed guidance on the interpretation and application of relevant provisions of the 2019 Patent Act in specific cases. The summary is as follows.
- 3-month period for submitting reasons and evidence is mandatory
Before the in force of the 2019 Patent Act, the Article 73 of the old Patent Act also set a "1 month" period for the petitioner of invalidation action to provide reasons and evidence, but such “1 month" restriction is not mandatory actually because of the proviso that "the Specific Patent Agency shall examine any evidence submitted before a decision is rendered.” In practice, there are often petitioners of invalidation action who continuously submit reasons or evidences during the examination process, resulting in delays in the examination process. The 2019 Patent Act adjusts the foregoing provisions, expressly requiring that the petitioner of invalidation action may only provide invalidation reasons or evidence within the 3-month statutory period after the date of filing the said action, and adds the legal effect that "the reason or evidence shall not be examined if the petitioner fails to provide them within the specified time period," in the hope that the examination period can be greatly shortened.
However, since the in force of the 2019 Patent Act, some parties are still concern whether the above-mentioned new regulations are compulsory. For instance, they often expressed their willingness to submit supplementary reasons, declared that the proposed evidence was supplementary evidence rather than new evidence, or emphasized that the proposed pleadings were supplementary opinions rather than "submission of supplementary reasons," etc. Through these attempts, they sought for opportunities to introduce new attack and defense methods into the examination process. In the Q&A Compilation released by the Intellectual Property Office, the Intellectual Property Office states expressly that no matter in what form reasons or evidence are provided by the petitioner of invalidation action, as long as the 3-month statutory period is exceeded, such reasons or evidence will not be considered nor can extension be requested. It is only when the petitioner of invalidation action submits supplementary information (such as full-text translation of the evidence, etc.) at the request of the Intellectual Property Office that such supplementary information can be exempt from the 3-month statutory period.
It should be noted that the above-mentioned "3 months" period is set for the petitioner of invalidation action to submit evidences and reasons. As for the patentee, even if the period that the Intellectual Property Office notifies to defend is expired, the Intellectual Property Office will still examine the evidences and reasons as long as they are raised before a decision of invalidation action is rendered.
- The attack and defense method proposed by the party at the request of the notice by the Intellectual Property Office shall not exceed the scope which the Intellectual Property Office notifies the party to clarify
Regarding the petitioner of invalidation action’s supplementary reasons and the patentee’s defense, the old Patent Act does not clearly stipulate the number of submissions and the time period. It only stipulates that the Intellectual Property Office may have discretionary powers to “conduct examination accordingly” only if the comment or the response submitted or provided pursuant to the preceding paragraph is likely to delay the proceedings or if the facts and evidence are sufficiently clear. In practice, however, the use of these discretionary powers remains very conservative. At best, it is only after the examination has undergone for a long time and the parties continue to alternately provide supplementary reasons or supplementary defenses, resulting in the delay in completing the procedure, that the Intellectual Property Office cites this rule to terminate the examination of invalidation action. In order to solve this problem, the 2019 Patent Act stipulates that, when the Intellectual Property Office deems it necessary to notify the petitioner of invalidation action to state its opinions, and the patentee to provide a response or a supplementary response, the time period for reply is only 1 month. Unless a request for extension is submitted in advance and approved, the comments or response shall not be examined if the petitioner or patentee fails to submit comments or provide a response within the specified time period.
However, can the petitioner of invalidation action take the advantage of the notice from the Intellectual Property Office and present new reasons or new evidence that he/she was unable to provide because the 3-month statutory period was exceeded? According to the Q&A Compilation released by the Intellectual Property Office, if the new reason or new evidence of the petitioner of invalidation action is clearly beyond the scope at the request of the notice by the Intellectual Property Office and is contrary to the legislative purpose of shortening the examination time period of the invalidation action case, then the new reasons or new evidences shall not be examined.
- Remedies for overdue post-grant amendments
Regarding the timing and frequency of post-grant amendments made by the patentee in the invalidation action procedure, the old Patent Act does not set a specific limit. It is common for the patentee to make multiple post-grant amendments, which results in the delay of the examination procedure. The 2019 Patent Act clearly stipulates that the patentee shall only file a request for post-grant amendments during the invalidation proceedings (1) when providing a response after receiving a notification from the Intellectual Property Office; (2) when providing a supplementary response after receiving the evidences or reasons provided by the requester; or (3) when providing a response after receiving a notification from the Intellectual Property Office that the post-grant amendment is rejected. Still, if a litigation case involving the invention patent is pending and the post-grant amendment is necessary, it is not subject to the afore-mentioned three kinds of time limits.
According to the 2019 Patent Act, post-grant amendments proposed by the patentee after the expiration date of the above-mentioned three kinds of time periods will not be accepted. However, if the patentee submits a response and post-grant amendments at the same time after the expiration date, the Intellectual Property Office shall only consider the response submitted by the patentee before the examination (as mentioned in the first point), and the response proposed by the patentee will lose its ground because the post-grant amendments will not be accepted. How should this situation be resolved? According to the Q&A Compilation released by the Intellectual Property Office, the examiner should send a notice requesting the patentee to re-submit a reply based on the claim which has not been amended, so that the patentee can consider whether to re-submit the post-grant amendments within the time period.