However, in contrast to the consistent stance that “no amendment can be filed after the invalidation decision is rendered and before the administrative relief is binding” in administrative litigation, civil litigation seems to adopt a more lenient approach to handling “amendment.”  Paragraphs 1 and 2, Article 41 of the Intellectual Property Case Adjudication Act, recently amended on 12 January 2023, and implemented on 30 August of the same year, stipulate that “In the case where the counterparty raises the validity defense in accordance with Paragraph 1 of Article 41 against the patent at issue, if the patentee has applied to the competent patent authority for amendment to the claims, the patentee shall report to the court that its further claims or assertions are on the basis of amended claims,” (i.e., the so-called “counter-defense of claim amendment," which is employed in response to the "defense of patent invalidity"), and that “Under the circumstance in the preceding paragraph, if the patentee is prevented by factors not attributable to himself from applying to the competent patent authority for amendment, and if rejecting such amendment is obviously unfair, the patentee may still directly state to the court his proposed amendment to be made to the claims, and may make his further assertions based on the amended claims thereof.”  Regarding the meaning of the term “the patentee is prevented by factors not attributable to himself from applying to the competent patent authority for amendment,” according to the legislative explanation of Paragraph 2, Article 43 of the Intellectual Property Case Adjudication Act, the primary scenario considered by legislators is that “If the competent patent authority rendered an invalidation decision in another invalidation case…the competent patent authority thus cannot accept the patentee’s application for amendment then;” the legislators believe that in such situations, since “the patentee is not allowed to apply for amendment to the patent claims with the patent authority in order to defend against the invalidation petition, if the patentee is also not allowed to adjusted his assertions based on the amended claims in the civil litigation, the patentee would have no other effective means of defense, which is clearly unfair.”  Therefore, in civil litigation, the patentee may have the chance to request the court to review his proposed claim amendment and then the patentee may thus make further assertion based on the amended claims.  However, it should be noted that the legislative explanation also specifically points out: “If the patentee could objectively have applied for amendment during the patent authority's examinatin period of another invalidation case but failed to do so in a timely manner, resulting in a subsequent inability to apply for amendment with the patent authority, this is still considered ‘attributable’ to themselves.”  In such cases, the court should not allow the patentee to submit the counter-defense of claim amendment in response to the patent invalidity defense.

 

Accordingly, when a patentee receives an invalidation decision in another invalidation procedure, while the patentee cannot make any amendment to the claims in subsequent administrative litigation to overturn the invalidation decision, in an ongoing civil infringement lawsuit, the patentee may still be allowed to present a counter-defense based on said amendment to defend against the adverse party's patent invalidity defense.  At this point, according to Paragraph 4, Article 43 of the Intellectual Property Case Adjudication Act, the court is entitled to independently determine the legality of the proposed amendment to the patent claims.