This website uses cookies to improve your browsing experience. By continuing to use this website you agree to our use of cookies. For more information on our use of cookies, click here to review the Cookies Policy.。

I accept
Home >> News & Publications >> Newsletter

Newsletter

Search

  • Search by Year:
  • Practices:
  • Time Period:
    ~
  • Keywords:

Can a Patentee Amend an Invalidated Patent During Litigation? Different Approaches are Adopted in Civil Infringement Litigation and Administrative Litigation



 Under current patent examination practice in Taiwan, once a patent is revoked due to an invalidation decision, the revocation would remain effective even if the patentee seeks administrative relief against the decision, until the final and binding result of the relief is rendered.  Accordingly, Chapter 20 of the Patent Examination Guidelines, Section 2 “Timing of Post-Grant Amendment,” clearly stipulates that if a patentee applies for amendment to the concerned patent at this stage, the Intellectual Property Office will not accept it.  The Supreme Administrative Court, in its 2023 Shang Zi No. 617 ruling rendered on 14 March 2024 for an administrative litigation filed by a patentee against an invalidation decision, sustained the same position, holding that the amendment requested by the patentee after appealing to the Supreme Administrative Court constitutes "new facts and new evidence" that cannot be considered according to the law.

 
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.
 
Back