The Patent Act to take effect on January 1, 2013 introduces three main changes to the invalidation proceedings.
1. Partial invalidation:
Under the current law, an invention or utility model patent is revoked in its entirety even if only one of the claims is found to be invalid. The new law provides for partial invalidation against a patent. In line with this change, a petitioner must identify the scope of the invalidation in the notice of invalidation upon filing an invalidation action, i.e., the particular claim or claims sought to be canceled, and the scope cannot be altered other than narrowed. For instance, if a petitioner identifies only claims 1 to 3 of a patent comprising five claims in the notice of invalidation but wishes to seek cancellation of the remaining claims during the invalidation proceedings, another invalidation action will need to be filed. Furthermore, if a petition for post-grant amendment is pending at the time the invalidation action is filed or is filed during the invalidation proceeding, the petition for amendment will be consolidated with the invalidation proceeding and only a single decision will be issued.
2. Additional grounds of invalidation:
Under the current law, invalidation actions can be filed on grounds that the patented subject matter lacks novelty or inventive step, has no utility (industrial applicability), or is not sufficiently disclosed in the specification. The new law provides for additional grounds: (i) introduction of new matter upon division or conversion, and (ii) substantive broadening or altering of the scope of the granted claims by post-grant amendment. These new grounds are applicable to applications allowed prior to the effective date of the new law.
3. Patent owner’s consent to withdrawal of invalidation:
To protect the interest of patent owners, withdrawal of an invalidation action by the petitioner after the patent owner has filed arguments in reply require the owner’s consent.