SAINT ISLAND INTELLECTUAL PROPERTY GROUP

As division of claims from a patent is not admissible under the current Patent Law, a patent may be canceled through invalidation proceedings, regardless of whether some of the claims of the patent are patentable. This has given rise to grave concerns. The views held by the courts in this regard may be apparent from a judgment on a patent invalidation case by the Supreme Court in December 2010, and a subsequent ruling on the same case by the IP Court in July, 2011. 

The patent concerned comprised two independent claims reciting different features. During the invalidation proceeding at the TIPO, the invalidation petitioner sought to cancel all the claims based on the cited evidence. The TIPO found one independent claim patentable over the cited evidence. However, as division of the patentable claim from the patent was not admissible, the TIPO canceled the entire patent as in accordance with the law. The patent owner appealed against the TIPO’s decision, and the case finally went to the Supreme Court. The Supreme Court was of the view that since the TIPO had ruled that the cited evidence failed to show all of the claims of the patent lacked novelty and an inventive step, it was improper for the TIPO to cancel the entire patent on the ground that the patent right granted could not be partially revoked as to some of the claims, and therefore remanded the case to the IP Court for consideration as to the applicability of the amendment mechanism. The IP Court however still sustained the TIPO’s decision, reasoning that the patent owner had already amended the claims six times during the proceeding at the TIPO and that, although the TIPO did not explicitly point out the one claim patentable over the cited evidence, it indicated that the unpatentable claim needed be deleted. 

It is apparent that the Supreme Court recognizes the need to ensure that a patent owner is given opportunities to make amendments to the claims of a patent where some of the claims are not found invalid over the cited evidence. 

The latest draft amendment to the Patent Law has taken into consideration the concerns regarding the existing invalidation procedure and proposed to provide for partial revocation of a patent in the Amended Patent Law.