SAINT ISLAND INTELLECTUAL PROPERTY GROUP

In Taiwan’s invalidation procedure, once the IP Office has made a determination of the validity of each claim and held that the invalidation is groundless, the case may be appealed to the Board of Appeals and subsequently to the IP Court. According to the provision of Article 33 of the Intellectual Property Adjudication Act, during the course of administrative litigation, the invalidation petitioner may, in addition to relying on the originally filed evidence, submit new evidence in regard to such grounds as novelty or inventive step, etc. On the other hand, the patentee, to dispel the effectiveness of the new evidence, may sometimes need to conduct post-grant amendment before the IP Office to prevent the claims from being invalidated. 
 
If the patentee fails to indicate to the IP Court that it has filed the amendment with the IP Office during the course of the administrative litigation, and the IP Court subsequently finds the patent invalid by revoking the respective decisions of the IP Office and the Board of Appeal, there are no statutory regulations that shed light on whether the IP Court should in its ruling directly order the IP Office to revoke the patent or simply order the IP Office to make a decision to give the patentee a chance to file a claim amendment with the IP Office. In this regard, the Supreme Administrative Court adopted the former in a resolution reached in a conference of division chief judges held in AprilJune this year, the main reason for this being that the parties have sufficiently argued in the IP Court proceedings, and the patentee should use its discretion as to the need to file any amendment. The aforesaid resolution was acknowledged once again by the Supreme Administrative Court in a ruling rendered in June this year. 
 
Therefore, although an invalidation may be found groundless by the IP Office and the Board of Appeals, if an administrative litigation is filed and the invalidation petitioner files new evidence while the case is being examined by the IP Court, the patentee still needs to consider whether a voluntary claim amendment should be filed with the IP Office. If an amendment is necessary, it should be conducted in time and the IP Court should be given notice. If the patentee files an amendment at the stage of administrative litigation and informs the Court thereof, even if the Court subsequently finds the patent invalid and remands the case to the IP Office for reexamination, it is possible that the patentee may still have a chance to prevent the patent from being invalidated by filing claim amendment.