Under the old Patent Act, a supplementary invalidation brief, evidence, a counterstatement, and/or amendment of claims could be filed any time before Taiwan’s Intellectual Property Office (TIPO) issues a decision. In order to prevent an invalidation action from dragging on for too long, the TIPO has included a much more rigid time frame in the new Patent Act implemented and enforced since last year.
After taking stock of the situation brought about by the stringent time-constraint requirement over a year, the TIPO lately provided some remarks, as follows:
- The new stipulation that an invalidation petitioner must submit supplementary briefs and/or evidence within 3 months from the date the invalidation action is filed, or within 1 month from the receipt of any notification from the TIPO has been and will be strictly observed. In this context, any late-filed supplementary evidential materials would not be taken into account except that they are filed at the request of the responsible Examiner to clarify the circumstances of the case.
- Filing amendment of claims in an invalidation action is also restricted. The patentee is only allowed to conduct amendment before a deadline designated by the Examiner for submitting a counter-statement, a supplementary counter-statement or upon receipt of a notification from the TIPO that there are lingering doubts to be cleared, or the amendment filed with the counter-statement has been rejected. No time limit is imposed on the patentee only if the patent at issue is the subject of a merit lawsuit.
- In case a counter-statement against an invalidation action is filed along with an amendment after a designated deadline, the contents of the counter-statement, filed prior to finalization of the invalidation action, are to be considered. As to the amendment, it will be rejected for not being filed at an appropriate time as specified above. However, since the contents of the counter-statement filed by the patentee are drafted based on the amendment concurrently filed, the Examiner generally will notify the patentee that the amendment not timely filed is rejected and the case will be examined based upon the granted claims as published. Upon receipt of such notification, the patentee may re-file the amendment and the Examiner will examine it with cross-reference to the contents of the counter-statement as filed.
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In view of the time limits prescribed in the Patent Act, either the invalidation petitioner or the patentee is placed under tight time pressure. It would be of much help if practitioners could assist their clients to collect useful evidential materials and develop winning strategies in the first place.
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The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.