If the Taiwan Intellectual Property Office (TIPO) and the Appeal Board of the Ministry of Economic Affairs both reject and dismiss a third-party action for patent invalidation, the petitioner may bring the case to the Intellectual Property Court (IPC) and submit new supporting evidence.
If the IPC finds some or all of the claims invalid based on the newly submitted exhibit(s), the court has discretion to either (i) remand the case to the TIPO for a decision on reopened invalidation proceedings, during which the patentee may submit post-grant claim amendments for overcoming the newly cited exhibit(s); or (ii) demand that the TIPO issues a decision rejecting the claims based on the IPC’s findings where no amendment from the patentee will be admissible. The IPC’s choice therefore affects the patentee’s ability to keep the patent alive.
Most of the IPC’s judgments before 2013 demonstrate the court’s tendency for option (i). For instance, in one case the IPC held that the patentee may amend the claims when the case was remanded to and pending at the TIPO. The TIPO may render a different decision based on the amendments.
In another case, the IPC held that the patentee was not able to counter the new evidence in a timely manner because the new evidence was not presented until the IPC’s appellate level. The court therefore remanded the case to the TIPO and stated that the patentee should be offered an opportunity for amendments, known as the ‘procedural interest’.
A moving attitude
However, the IPC’s attitude has been gradually shifting towards (ii); since 2014 it has been asking the TIPO to issue a rejection decision on the claims. For instance, one IPC judgment was entered to invalidate the claims because the patentability of all the claims had already been analysed, leaving the TIPO with no more facts to investigate, and because the patentee had also expressly waived the entitlement to make amendments during the trial.
Likewise, in another judgment, the IPC recited that the patentee was summoned to intervene, but the patentee failed to submit any pleading or attend the hearings. The court therefore confirmed that the patentee had no procedural interest in claim amendments.
Towards maintaining consistency in the IPC’s rulings, the Judges Conference of Supreme Administrative Court (SAC) held in April 2015 concluded that the IPC is encouraged to render a judgment directly ordering the TIPO to reject claims and even invalidate the patent by a new decision.
Particularly, the Conference said: “In the case that the court has already reviewed the disputed issues and the parties have also debated thoroughly over the new exhibit(s), while the patentee fails to advise the court of any amendments pending or about to be filed with the TIPO, the court shall order the TIPO to issue a decision specific to the court’s findings.”
SomeSAC judgments in June and September 2015 started to support the conclusion. One ruling said that: “According to the Patent Act, the patentee has the liberty of timing to request for post-grant amendments to the claims that survive over an invalidation action. Therefore, there is no bias against the invalidation petitioner’s right to submit new evidence or against the patentee’s right to submit amendments. If the IPC determines the new evidence being sufficient whereas the patentee did not exercise his right to amend, the IPC shall grant a favourable decision to the plaintiff ordering the TIPO to issue a specific rejection decision.”
In another judgment the SAC said: “Since the IPC has reviewed the disputed issues along with oral debates and the patentee showed no interest to amend, the court may revoke the TIPO’s decision and order the TIPO to issue a specific decision of claim rejection.”
Viewing the above, the conclusion seems to have been enforced. As one recommended strategy, during a trial the patentee is advised to request the judge to disclose his/her opinions on the validity of the claim(s). In case the claim has no merit in view of the new evidence, the patentee should consider an amendment, or at least show his/her intention to do so before the IPC judgment is rendered.