Newsletter
AMENDMENT OF PATENT CLAIMS DURING OPPOSITION PROCEEDINGS
In its recent decision in an administrative appeal brought by DuPont, the Ministry of Economic Affairs (MOEA) revoked a decision of the Intellectual Property Office (IPO) in which the IPO had upheld an opposition action against a patent granted to DuPont. The MOEA remanded the case back to the IPO and ordered the IPO to render a decision in keeping with the law.
The MOEA's appeal decision stated that if, during patent opposition proceedings, the opposed party proposes amendments to the patent claims, and in the IPO's opinion, part of the amendments can be accepted and part cannot, then the IPO should apply the principle, as expressed in Article 102 of the Administrative Procedures Act (APA), that before rendering an administrative decision that restricts or deprive of a person's rights, the administrative agency should give the affected person an opportunity to express his opinion.
The MOEA further stated that according to the relevant provisions of the old Invention Patent Examination Guidelines, as issued on 10 July 2000, before rendering a decision in an opposition action, the IPO should, ex officio, explain the grounds for its decision and instruct the opposed party to once again propose amendments. Only if the party proposes no amendments before the deadline set by the IPO may the IPO render a decision unfavorable to the opposed party.
During its defense against the opposition action, DuPont had put forward amendments to some of the patent claims, yet the IPO directly issued a decision upholding the opposition action and annulling DuPont's patent. The IPO stated in its decision that certain of the amendments proposed by DuPont had introduced substantive changes and could not be approved, and hence its examination of the opposition action was based on the originally-published version of all the patent claims, as never been amended.
The MOEA held that in view of the legislative purpose of the Patent Act of encouraging invention, and taking into consideration the spirit of the old Invention Patent Examination Guidelines and Article 102 of the APA, the IPO, being of the opinion that only part of the amendments proposed by DuPont were unacceptable, should, before rendering its final decision, have given DuPont a further opportunity to propose amendments. Therefore the MOEA set aside the IPO's original decision.
Under the current Patent Act, the opposition procedure no longer exists. With regard to patent cancellation procedures, the Patent Act merely provides that the IPO should serve on the patentee a copy of the petition submitted by the cancellation petitioner, so that the patentee may put forward a defense (Article 69 Paragraph 1), and should inform the cancellation petitioner of any amendments to the patent claims proposed by the patentee, for the cancellation petitioner to express its opinion (Article 71 Paragraph 3).
In practice, before rendering an unfavorable decision, the IPO does not always notify patentees of its opinions or instruct the patentees to put forward further amendments or a defense, as it always does at the patent prosecution stage (Article 46 Paragraph 2). Furthermore, although both past and present Patent Examination Guidelines contain similar provisions, it appears that the IPO may not have always properly followed them. Although the above administrative appeal decision relates to the opposition procedure which has now been abolished, the same legal principles should be applicable to the cancellation procedure. The MOEA's ruling should be helpful in affirming the procedural protections available to patentees.