According to Paragraph 1 of Article 33 of the Intellectual Property Adjudication Act, in an administrative suit which is a subsequent procedure of a patent cancellation action, if the cancellation petitioner presented arguments against the novelty or the inventive step of the target patent in the cancellation action which was reviewed by the patent office, he/she is allowed to submit new prior art before the closing of the oral debate proceeding in the administrative suit to strengthen his/her arguments against the novelty or inventive step, and the administrative court has to accept and review the new prior art. However, it has been argued for quite a long time whether or not such stipulation is really applicable to all patent cancellation administrative suits. In the recent Supreme Administrative Court Judgment No. 107-Judgment-391, the court holds that Paragraph 1 of Article 33 of the Intellectual Property Adjudication Act is applicable only when the plaintiff of such an administrative suit is the cancellation petitioner. The Supreme Administrative Court's reasons are mainly as follows:
1.If a cancellation petitioner received the patent office's decision holding that the target patent is valid, and then the petitioner filed an administrative suit because he/she was not satisfied with the patent office's decision, in the proceedings of such administrative suit, the patentee can still apply with the patent office to amend the claims and/or the specification of the target patent according to the Patent Act, since the patent is still effective. Therefore, even if the cancellation petitioner submits new prior art or asserts new prior art combinations to further challenge the novelty or inventive step of the patent in the administrative suit, the patentee will still be given an opportunity and the time needed to review the prior art, provide counter-arguments in response to the new prior art, and decide whether or not to effect a post-grant amendment. If, before the closing of the oral debate court proceeding, the patentee has reviewed the prior art and provided counter-arguments but does not effect a post-grant amendment (and does not inform the court that he/she has effected such an amendment), and the court later determines that the patent should be invalid based on the new prior art or the new prior art combinations, such decision by the court conforms to the legislative reason of Article 33 of the Intellectual Property Adjudication Act wherein patent validity issues should be dealt with by the administrative court as much as possible, to avoid the parties' time being consumed by dealing with new cancellation actions.
2.If the plaintiff of such an administrative suit is the patentee, it usually means that the patentee received an unfavorable decision revoking the patent right from the patent office. The patentee was not satisfied with the patent office's decision, and thus filed the administrative suit. Since the patent right has been revoked by the patent office, the patentee does not have the patent right for him/her to effect amendments until the administrative court overturns the patent office's decision. Under such condition, if the court allows the cancellation petitioner to submit new prior art to enhance the arguments against the novelty and/or inventive step of the patent, it is unfair to the patentee because the patentee cannot correspondingly take an action to enhance the novelty and inventive step of the claims of the patent by effecting post-grant amendments.
Given the above, the Supreme Administrative Court's attitude on whether the first-instance administrative court should accept new prior art from a cancellation petitioner is clear. In the past, it has been considered acceptable that the first-instance court accepts new prior art from the cancellation petitioner, who is the intervener in the suit, and overturns the patent office's decision, and orders the patent office to make a decision following the first-instance court's opinions; in such proceedings, the patentee will be able to amend the claims or the specification of the patent in the re-opened cancellation action before the patent office. However, according to the above-mentioned Supreme Administrative Court's judgment, the first-instance court should not accept any new prior art submitted by the cancellation petitioner if the petitioner is the intervener in that suit.