Newsletter
Making Amendments in a Patent Invalidation Action
The Intellectual Property Office (IPO) recently announced some changes to the procedure by which patentees may make amendments in a patent invalidation action.
In regards to invalidation actions, the Patent Act (the "Act") only specifies (1) that the IPO shall serve a copy of the written petition for patent invalidation to the patentee so that he may file a statement of defense (Article 69, Paragraph 1), and (2) that the IPO shall notify the invalidation petitioner of the patentee's requests for amendments (Article 71, Paragraph 3). Although Article 46, Paragraph 2 requires the IPO to notify a patent applicant before denying his application, the Act does not impose a similar duty on the IPO in an invalidation action. In other words, even if the IPO plans to reject a request for amendment, it does not necessarily need to provide the patentee with any notice or give the patentee any chances to respond. This seems contrary to the principle laid out in Article 102 of the Administrative Procedure Act, which provides that an administrative authority shall, before rendering an administrative disposition to impose restraint on the freedom or right of a person or to deprive him of the same, give the person subject to the disposition an opportunity to state his opinions. Also, even though the Patent Examination Guidelines require the IPO to notify the patentee and provide a chance to cure when it finds that only part of the request for amendment is acceptable, the IPO has not always adhered to this rule in practice. This adversely impacts the right of the parties in a patent dispute, and is also at the root of many controversies. Both the Ministry of Economic Affairs (MOEA) and the Administrative Courts have taken action to address this lack of notification.
For example, in 2007 the MOEA pointed out in appeal decision (Su-09606075030) that in a patent opposition action (now abolished), if the IPO finds that an amendment request made by the opposed party is partially acceptable, then it should apply Article 102 of the Administrative Procedure Act and relevant provisions in the Patent Examination Guidelines, and notify the opposed party and provide a chance to cure before making any adverse decisions. The IPO may only take adverse decisions against the opposed party if he fails to respond within a specified timeframe. Even though this decision by the MOEA only applies to patent opposition actions, it should nevertheless be informative in the handling of patent invalidation actions.
The IPO recently announced that in order to comply with Article 102 of the Administrative Procedure Act, it will provide notice to a patentee prior to denying his request for amendment. The notice will explain to the patentee why his request does not satisfy the requirements of the Patent Act. The IPO emphasized in its announcement that it will provide such notice only once. In other words, the IPO has broadened its duty to notify from cases in which it finds that a patentee's request is partially acceptable to also include cases in which the request is not in conformance with the Patent Act, subject to the one notice limitation. This rule change should prove beneficial to patentees.