It is common that the infringers (defendants) not only raise arguments to challenge the validity of the patent at issue in the civil trial proceedings but also file petitions of invalidation with the Taiwan Intellectual Property Office ("TIPO"). The Patentees may therefore apply for post-grant amendment with the TIPO in response to the defendants' challenge towards the validity of their patent. Before the TIPO decides whether to approve such application, Article 32 of the Intellectual Property Case Adjudication Rules (hereinafter referred to as the "Adjudication Rules") stipulates that "Where a party to a civil action over patent infringement claims or defends that the patent right shall be cancelled and where the patent right holder has applied to the competent intellectual property authority for amendment to the scope of patent claim, an appropriate date for a court session shall be designated taking into account the extent to which the amendment has proceeded and upon consultation with both parties, except where trial and adjudication of the principal case may directly proceed if the amendment application obviously shall not be granted or if the amended scope of claim, once approved, does not constitute an infringement of right." for the issues: 1) which claims should be the basis for the trial, i.e., the original claims (i.e., the claims which remains valid) or the post-amended claims (i.e., still under review, with approval yet undecided), and 2) whether the Intellectual Property Court ("IP Court") should make an independent decision on whether the application of post-grant amendment is acceptable. However, such stipulation does not provide specific solutions for the aforementioned issues.
From the current IP Court practice, although most judges tend to make a decision on whether the application of post-grant amendment is acceptable by them, there could be different ways to deal with such matters depending on different facts. The IP Court Judgment 2018 Min Zhuan Su Zi No. 16 rendered on December 20, 2018 holds that, if the post-grant amendment is filed by the patentee and such amendment is unfavorable to the patentee's position in the pending infringement litigation, as it is the option (of filing for such post-grant amendment) made by the patentee, the court can directly render a judgment based on such amended claim(s). The holding by the IP Court is summarized below:
1.Based on the text of Article 32 of the Adjudication Rules that "trial and adjudication of the principal case may directly proceed if the amended scope of claim, once approved, does not constitute an infringement of right," said scope for the trial should be "amended claim." Otherwise, if the court tries the case based on the original published claim, the defendant may constitute infringement due to the broader original published claim. It should not be the purpose of such provision.
2.When the patentee files a complaint, based on the doctrine of disposition, he/she bears the burden of specifying the responsible parties, statement of claim, the subject matter of the litigation and the rights and obligations for the cause. If the plaintiff claims the rights in the civil litigation based on the unfavorable amended claim(s) (as the amended claim(s) would render the result of non-infringement or invalidity), the court is allowed to try the case based on the unfavorable claim(s) lodged by the plaintiff.
3.In a civil infringement litigation, as the action of filing for post-grant amendment by the patentee aims at the defense of the validity of the patent at issue; thus, it, by nature, should be "defense" in the civil court proceeding and should not substantially alter the scope of such patent (only the claim(s) published by the TIPO attain actual exclusivity). Even if a patentee claims his/her rights based on the patent, which has been filed for post-grant amendment while the result has not been published, and the court renders a judgment, based on such amended claim(s), with the holding of non-infringement or invalidity of the patent, the patentee is still entitled to file for post-grant amendment later. The patentee is still allowed to file a civil complaint based on the (amended) "valid patent scope." If such post-grant amendment has been approved and published, it will have binding effect to the public. As such, if the civil court tries the cases based on the amended content of the patent, which has not been published and is unfavorable to the patentee, claimed by the patentee, as it is the patentee's disposition and such amended content of the patent does not pose adverse impact on the enforcement of the patentee's rights in the future, the trial by the civil court does not violate the principle of party presentation and the doctrine of disposition.
The holding by the IP Court shows its emphasis on the doctrine of disposition. If a patentee tends to rebut the infringer's argument of patent invalidity by filing for post-grant amendment, he/she should carefully evaluate whether the plan of post-grant amendment is able to simultaneously support the patentee's claims of validity and infringement.