In the past, patent invalidation cases were examined by reviewing the written documentation/evidence submitted, and a face-to-face interview or on-site inspection would be conducted only if the Intellectual Property Office (IPO) deemed necessary. In order to make the examination of patent invalidation cases more transparent and to simplify the subsequent administrative review procedure, the IPO had, based on the hearing system stipulated in the Administrative Procedure Act, formulated the "Rules for Holding Hearings on Patent Invalidation Cases," which were announced on 30 March 2018 (the "2018 version"). According to the rules, the hearings on patent invalidation cases should be held by a three-examiner panel, allow the parties to present oral arguments and be open to the public. Up till March 2019, the IPO has held hearings on 12 patent invalidation cases. After holding hearings on more than 10 cases, having several internal discussions and collecting public comments, the IPO announced on 5 March 2019 that it would implement amendments to the "Rules for Holding Hearings on Patent Invalidation Cases" (the "2019 version").
The 2019 version includes the following main amendments:
1.The 2018 version stipulated that after one party petitions for a hearing, a hearing will be held only if the opposing party agrees. In contrast, according to the 2019 version, a hearing can be held even if the opposing party disagrees. Nevertheless, to avoid public concerns, the 2019 version grants the IPO the discretion to decide whether a hearing is necessary (see Article 3.1 of the 2019 version).
2.The 2019 version clearly specifies what the IPO should do if either party applies for rescheduling of the hearing or requests that the hearing should not be open to the public.
For example, if either party applies for rescheduling of the hearing, the party should state the reasons on the application form. The IPO can grant the rescheduling application if the reasons provided by the party are considered reasonable by the IPO. Otherwise, the IPO should inform both parties that the hearing will be held on schedule.
Additionally, if either party considers that opening the hearing to the public is contrary to public interest or will cause serious damage to it, it may state its reasons on the application form and request a private hearing. The IPO can agree to hold a private hearing if the reasons provided by the parties are considered reasonable by the IPO. Otherwise, the IPO should inform the parties that the hearing will be open to the public (see Articles 6.3 and 6.4 of the 2019 version).
3.The purpose of holding a hearing is to allow the IPO to verify relevant facts after both parties have submitted their evidence, rather than to give the parties an opportunity to submit new evidence or arguments. To prevent the parties from submitting new evidence or arguments and to avoid delaying the examination procedure, the 2019 version only allows the parties to submit a hearing statement or provide a further explanation of the evidence that has been submitted (see Articles 6.1(6), 8(1) and 9.9 of the 2019 version).
4.If either party considers that one or more of the examiners should be recused from the case, the party should submit the reasons for recusal within 10 days of receipt of the hearing notice (see Article 6.7 of the 2019 version).
5.If either party is late for the hearing, the examiner presiding over the hearing can allow the party to attend the hearing only if he/she considers that it is necessary for the party to clarify certain facts (see Article 8(7) of the 2019 version).
A hearing gives both parties an opportunity to provide the examiners with an explanation in person. The parties can present questions and issues to each other at a hearing, and thus a hearing is not limited to examination of written evidence only. Also, all hearings should be held by a three-examiner panel, which can avoid bias from a specific examiner. In addition, according to Article 109 of the Administrative Procedure Act, if either party is not satisfied with the decision made after a hearing, the party can directly file an administrative lawsuit without filing an appeal first. Therefore, the administrative remedy procedure has become simpler.
The IPO has introduced the availability of hearings in patent invalidation cases and amended relevant rules based on actual practices. It is expected that with a more comprehensive examination procedure and more administrative resources, the quality of examination of patent invalidation cases will be better and the decisions made will also be more credible.