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As reported in our September 2000 issue, on 10 July 2000, the IPO announced the entry into force of Chapter 9 of its Patent Examination Guidelines: Opposition Actions, Cancellation Actions and Ex-Officio Examinations. On 30 November 2000, the IPO announced the fol-lowing amendments to the guidelines:
Article 41 Paragraph 2 and Article 72 Para-graph 4 of the Patent Law require an opposi-tion or cancellation petitioner to submit rea-sons and evidence for an opposition or a can-cellation action within one month after filing the action. In past practice, the IPO took the view that the above one-month period is an invariable statutory time limit, and it would therefore not consider new reasons or new evidence submitted by a petitioner after the one-month period expired. However, in nu-merous judgments over several years, the Administrative Court made it clear that the one-month period is not an invariable time limit, and therefore the IPO should not refuse to consider such reasons or evidence merely on the ground that they were submitted after the period expired. The IPO has, therefore, amended the guidelines to state that the IPO must consider reasons or evidence in support of an opposition or a cancellation action even if they are submitted beyond the one-month period, regardless whether they are of a sup-plementary nature or amount to new reasons or new evidence.
Article 72 Paragraph 3 of the Patent Law pro-vides that where an interested party has legal interests that may be restored by the revoca-tion of a patent, such party may file a cancel-lation action even after the patent in question has expired or lapsed. In order to enforce the legislative intent of this provision, the IPO has amended the guidelines to state that once a cancellation action has been filed, even if the patent term of the disputed patent expires or the patent has lapped due to non-payment of annuities or other reasons, examination of the action must continue and a decision must be rendered. If an interested party files a can-cellation action after the patent term has ex-pired or the patent right has lapsed, the action may only be considered if the petitioner has legal interests that may be restored by revoca-tion of the disputed patent.
