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Should the IP Court Wait For the TIPO's Decision on a Patent Amendment Application in the Administrative Litigation?

Hsiu-Ru Chien/Shih-I Wu

Based on Paragraph 1, Article 33 of the Intellectual Property Case Adjudication Act, in the administrative litigation for a cancellation action, which is handled by the IP Court, the cancellation petitioner is allowed to submit new evidence to support the same ground for invalidity that he has raised in the TIPO's cancellation proceeding.  To balance the patentee's rights, the judicial practice has thereby recognized that the patentee may file an amendment in response to the new evidence even though the case is now under administrative litigation (reference to 2011-Pan-No.1820 judgment of the Supreme Administrative Court).  In its resolution made at the 1st Joint Meeting of Presiding Judges and Judges (II) held in April 2015, the Supreme Administrative Court further requires that if the new evidence submitted by the cancellation petitioner during the administrative litigation is sufficient to prove the invalidity of the claims of the patent at issue, the patentee shall apply for an amendment with the TIPO and report such application to the IP Court prior to the end of the oral debate procedure.  Otherwise, the IP Court can directly order the TIPO to invalidate the patent at issue. 


However, if the patentee files an amendment with the IPO in the administrative litigation, there are doubts to be cleared as to whether the IP Court needs to wait until the TIPO makes a decision before entering a judgment.  The Supreme Administrative Court provides explicit opinions on this legal issue in its 2016-Pan-No.337 judgment rendered on June 30, 2016.


In the original judgment of this case, the 2014-Xing-Zhuan-Su-No.97 judgment entered by the IP Court, the IP Court reviewed the case based on the originally published claims because the TIPO failed to report to the court its examination results of the claim amendment by the time of judgment; the IP Court thereby held that the TIPO's original decision on the cancellation action shall be revoked.  It further added that since the patentee has filed the amendment, which needs the TIPO's examination and decision, the case thus shall be returned to the cancellation proceedings and re-examined by the TIPO.


However, the above judgment of the IP Court was revoked by the Supreme Administrative Court in its 2016-Pan-No.337 judgment.  According to the Supreme Administrative Court, whether the amendment is approved or not is crucial to the determination on how the technical features of the patent at issue are to be interpreted and defined; therefore, the IP Court shall wait until the TIPO’s decision concerning the result of the amendment.  Moreover, if the scope of the patent claims is uncertain, it is impossible to determine the non-obviousness of the patent at issue.  If the patentee has filed an amendment, the IP Court shall wait until the TIPO’s decision concerning the amendment and show the parties the content of said decision, so that the parties can appropriately and fully debate any disputed legal and factual issues and make necessary declarations and statements; the IP Court can then duly make a judgment.  The Supreme Administrative Court therefore announced that although the IP Court' judgment is well-grounded for judging non-obviousness issue of the patent at issue, the IP Court should await the TIPO’s decision concerning amendments and then make a judgment on the basis of the amended claims.  The IP Court shall not merely return the case to the cancellation proceedings.


It remains to be seen whether such a conservative opinion of the Supreme Administrative Court will hinder adjudicative practices of the IP Court which gets used to actively making its own decisions on various issues of patent cases and goes as far as to impact the timely closing of administrative litigations.