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Should a Patentee Be Given an Opportunity to Respond if the TIPO Approves an Invalidation Request for a Different Reason Than That in the Requester’s Claim but Related to the Same Overall Issue?
During patent invalidation proceedings, an invalidation requester may make a specific claim regarding evidence it has furnished and corresponding facts (e.g., the invalidation requester may claim that a certain cited reference fails to fully disclose the technical features of a patent and cannot negate the inventive step of the patent unless used in combination with other cited references). However, upon review of the same evidence, the Taiwan Intellectual Property Office (TIPO) may form an opinion different from that in the invalidation requester's claim (e.g., the TIPO may conclude that the cited reference has fully disclosed the technical features of the patent to be invalidated). Under such circumstances, is the TIPO legally obligated to notify the patentee of this difference of opinion so it can respond in a specified time period? The Intellectual Property and Commercial Court (hereinafter the “Court”) took a clearly affirmative stance on this issue in its 2022-Xing-Zhuan-Su-Zi No. 21 Judgment, which was rendered on November 24, 2022. The Court stated that to avoid any interference with the patentee’s exercise of its rights (e.g., its decisions regarding strategies for responding to the invalidation proceedings or whether to amend claims during the proceedings), the TIPO must provide an opportunity for the patentee to respond in a specified time period. The TIPO has no room to exercise its own discretion regarding this matter.
The Court’s affirmative judgment is rendered on the grounds that Article 75 of the Patent Act expressly sets forth the following: “When conducting invalidation proceedings, the TIPO may, by ex officio, examine the reason(s) and evidence not provided by the requester of invalidation action but within the scope of the invalidation claim, and notify the patentee to respond within a specified time period. The invalidation proceedings shall be conducted accordingly if the patentee fails to respond within the time period.” According to the legislative intent of Article 75 of the Patent Act and provision 4.4.1 of the 2021 version of the Patent Invalidation Examination Guidelines, when an invalidation requester limits its grounds for invalidation to a certain claim, and, after reviewing these reasons, the TIPO forms an opinion completely different from that asserted by the invalidation requester, this situation should also be regarded as one that has undergone “ex officio consideration” by the TIPO. This is because, in the aforementioned situation, the patentee may respond only to the claim asserted by the invalidation requester and cannot be expected to prepare a defense against a decision by the TIPO that may be extremely different from the requester’s claim. If the TIPO reaches a conclusion unfavorable to the patentee without offering an opportunity for it to respond, the patentee would be the victim of an ambush.
In the case discussed here, the invalidation requester argued that a combination of Evidence 2 and 3 was sufficient to negate the inventive step of Claim 1 of the patent at issue. Believing that Evidence 2 alone was insufficient to disclose the technical features of Claim 1, the invalidation requester did not explain how Evidence 2 may have disclosed these features. According to the Court, if after an ex officio review of Evidence 2, the TIPO held the opinion that Evidence 2 had disclosed the technical features of Claim 1 and reached the conclusion that the combination of Evidence 2 and 3 could negate the inventive step of Claim 1 of the patent at issue, the TIPO's opinion on Evidence 2 must be regarded as an ex officio examination. In this instance, the TIPO is legally obligated to provide an opportunity for the appellant to respond in a specified time period because its opinion on Evidence 2 differs from the claim expressed by the invalidation requester, even though the opinion is formed based on a combination of the same evidence and does not deviate from the issue raised by the requester.
Therefore, on receipt of a Decision of Patent Invalidation, a patentee should carefully confirm whether the grounds of invalidation stated in the Decision are the same as the reasons presented by the invalidation requester and whether the patentee was given an opportunity to respond to any inconsistency in the grounds for invalidation during the invalidation proceedings. This will allow the patentee to determine whether its rights and interests have been impacted.