PENDING ISSUES REGARDING CORRECTIONS TO BE MADE AGAINST INVALIDATION-PART I

Wei-Ting Chou, Patent Director, Patent Group I

ˇ˝  Master of Agricultural Engineering, National Taiwan University

ˇ˝  Bachelor of Medical Engineering, National Cheng Kung University

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Issue 1: Will a correction petition filed in an invalidation case during an administrative remedial proceeding be accepted?  What is the process for handling the correction?

Details:

1. The previous practices followed an all-or-nothing rule.  Even if only a part of the claims in a patent application was invalidated, after the Office ex officio issued to the Applicant a notification that the patentee should correct the invalidated part, if the patentee did not make correct or cancel this part, a decision that the entire patent application (i.e. all of the claims) was invalidated would be made.  Therefore, in the subject in a formal decision regarding whether the patent would be invalidated under the previous practices, there would be only one sentence, that is, either ˇ§the invalidation is established and the patent rights shall be revokedˇ¨, or that ˇ§the invalidation is dismissedˇ¨.  However, in the system where the claims can be partially invalidated as introduced into the new Patent Law, one can invalidate only a part of the claims (in the invalidation scope statement), and thus the decision regarding whether the patent will be invalidated will be made based on the part of the claims in the scope statement.  Thus, the subject of the formal decision will be more than one sentence.  However, either party can file an administrative appeal against the decision unfavorable thereto.  Therefore, it can be expected that, after the new Patent Law became effective, the procedures to process an administrative appeal filed against the invalidation decision will be more complicated than those under the previous practices.

2. Furthermore, according to the new Patent Law, it is stipulated that if a petition is filed to invalidate a patent and a corresponding correction is filed therefor, the invalidation and the correction will be jointly examined and decided.  In addition, during the invalidation proceedings, the patentee can file a specific correction corresponding to a specific invalidation as a defense.  Accordingly, it can be expected that there might be an increasing possibility that, during an administrative appeal proceeding against a current invalidation decision, the patentee files a correction corresponding to another invalidation as a defense, or although there is no other invalidation case, a correction to the patent is necessary.  After examining the correction filed for the patent during the administrative appeal proceeding, if this correction is allowed, this correction should be retroactively effective from the filing date (according to Article 68 of the new Patent Law), and thus the basis according to which the current invalidation decision is made will be changed.  Therefore, there could be instability in this legal system.  Accordingly, whether such correction can be filed during both the administrative appeal proceeding and the administrative correction should be deliberately considered in view of the theory and the practices, so as not to run odds, but to preserve the patenteeˇ¦s rights to petition a desired correction.


Reported by Wei-Ting Chou
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