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How Should Administrative Court Deal with Patentee's Application for Amending Patent Claims in Patent Invalidation Litigation?
To prevent disputes over validity of trademark or patent rights from being delayed in resolution due to recurring administrative litigation, Paragraph 1, Act Article 70 of the Intellectual Property Case Adjudication states: "In an administrative litigation concerning invalidation of a registered trademark or patent, the Intellectual Property Court ("IP Court," restructured as the IPC Court on July 1, 2021) should take into account any new evidence submitted on the same grounds for the invalidation prior to the end of the oral debate procedures."
In response to the new evidence from the invalidation petitioner, the patentee may still apply to the Intellectual Property Office ("IPO") to amend his/her patent claims, even though the IPO's examination of the invalidation has been ended up. This was clearly stated in the second resolution from the Supreme Administrative Court Presiding Judge Committee April 2015 Meeting on April 14, 2015.
Subsequently, the Patent Act was amended on May 1, 2019 to add a proviso to Article 74, Paragraph 3, which reads "During the invalidation proceedings, the patentee can file a request for amending the patent claims only when submitting his/her defense, supplementary defense or response to the IPO's notification within the period specified by the IPO. However, the above shall not apply if a patent litigation involving the patent in dispute is pending." This serves as the basis for amending the claims during the invalidation litigation.
Accordingly, a patentee clearly can apply to the IPO for amendment when new evidence is submitted by the invalidation petitioner in the administrative litigation. However, there is no specific procedure for how the court deals with such application. The Supreme Administrative Court and the IP Court have expressed opinions as follows.
The court should await the IPO's decision on the amendment application before rendering a judgment
On June 30, 2016, the Supreme Administrative Court stated in its judgment (Case no. 2016 Pan Zi No. 337) that the court should not make its own judgment on the amendment application, but wait for a decision from the IPO, for reasons as follows.
(1) The patent claims holds a crucial position in determining the inventive step of the concerned patent. If the scope of the claims is uncertain, it is impossible to proceed with the judgment of its inventive step.
(2) Once the application for amending the patent claims is granted and published, although in the administrative litigation proceeding, the amendment shall take effect from the filing date of the patent. Whether the amendment is allowed or not is related to the interpretation and determination of the technical characteristics of the patent. Hence, the IP Court should wait for the result of the amendment decision from the IPO before judging whether the amendment complies with the requirements stipulated in the Patent Act and what the content will be after the amendment.
(3) If the patentee has applied for amendment in accordance with the law, the amendment decision should be awaited, and the content of the amendment decision should be provided to the parties in litigation to enable them to make appropriate and complete factual and legal arguments, as well as necessary declarations and statements. In this situation, it can be said that the case have been fully argued by the parties, and only then can a judgment be made.
The Supreme Administrative Court judgments (Case no. 2018 Pan Zi No. 391 and Case no. 2019 Pan Zi No. 211) have adopted the same view, reiterating the following.
Whether the amendment is allowed or not is related to the interpretation and determination of the scope of the claims. Hence, the courts should wait for the amendment decision published by the IPO before confirming which version of the specification or the claims to be examined in the invalidation litigation.
As for whether the courts should wait for amendment decision from the IPO to become final and binding, the IP Court judgement (Case no. 2016 Xing Zhuan Su Zi No. 99) held that, since the aforementioned Supreme Administrative Court judgment (Case no. 2016 Pan Zi No. 337) makes no mention thereof, as long as the IPO publishes the decision, the courts can determine legality of the patent invalidation based thereon.
How should the courts wait for the result of the amendment decision from the IPO?
As for how the IP Court should wait for the result of the amendment decision from the IPO, the aforementioned Supreme Administrative Court judgment (Case no. 2016 Pan Zi No. 337) or its subsequent judgments did not provide any guidance, so it seems that the IP Court may make its own decision based on the specific case. It seems more common to simply postpone the subsequent trial date until the notice of the amendment decision is received from the IPO, and then schedule a new trial date. However, the IP Court's ruling (Case no. 2022 Xing Zhuan Su Zi No. 37) made on January 18, 2024, took a more cautious approach - it directly issued a ruling to suspend the litigation.