On 1 November 2019 the new Patent Act took effect, setting stricter time limits for parties to propose attack and defence methods in invalidation procedures in order to avoid delays in and improve the effectiveness of invalidation examinations. The relevant examination standards were released and entered into force on 1 November 2019. Following public confusion, in November 2020 the Taiwan Intellectual Property Office (TIPO) issued a Q&A on the examination practices of the Patent Act, to provide more detailed guidance on the interpretation and application of relevant provisions in specific cases. This article summarises the guidance.
Three-month deadline for submitting reasons and evidence is mandatory
Article 73 of the old Patent Act set a one-month deadline for petitioners of invalidation actions to provide reasons and evidence in proceedings. However, the one-month restriction was not mandatory because "the Specific Patent Agency shall examine any evidence submitted before a decision is rendered". In practice, petitioners of invalidation actions often continuously submit reasons or evidence during the examination process, resulting in delays in the examination process. The new Patent Act has adjusted this practice by requiring that petitioners of invalidation actions provide their invalidation reasons or evidence within three months of filing said action. Moreover, in a bid to shorten the timeframe of examinations, the new Patent Act states that "the reason or evidence shall not be examined if the petitioner fails to provide them within the specified time period".
However, despite the new Patent Act having entered into force, some parties are still unsure of whether the new deadline is compulsory. For instance, some parties have:
- expressed their willingness to submit supplementary reasons;
- declared that the proposed evidence was supplementary evidence rather than new evidence; and
- emphasised that the proposed pleadings were supplementary opinions rather than the "submission of supplementary reasons".
Moreover, parties have sought opportunities to introduce new attack and defence methods into the examination process. In the Q&A, TIPO states that no matter in what form petitioners of invalidation actions submit their reasons or evidence, if they exceed the three-month deadline, their reasons or evidence will not be considered and they cannot request an extension. It is only when petitioners of invalidation actions submit supplementary information (eg, a full-text translation of the evidence) at the request of TIPO that such supplementary information can be exempt from the three-month deadline.
The three-month deadline concerns only petitioners of invalidation actions. With regard to patentees, even if the period that TIPO notifies to defend has expired, TIPO will still examine the evidence and reasons as long as they are raised before an invalidation decision is rendered.
The attack and defence method proposed by a party at the request of the notice by TIPO must not exceed the scope of which TIPO notifies the party to clarify.
With regard to the petitioner of an invalidation action's supplementary reasons and the patentee's defence, the old Patent Act does not clearly stipulate the number of submissions and the time period. It stipulates only that TIPO may have discretionary powers to "conduct examination accordingly" only if the comment or the response submitted is likely to delay the proceedings or if the facts and evidence are sufficiently clear. However, in practice, the use of these discretionary powers remains conservative. At best, it is only after the examination has been ongoing for a long time and the parties continue to alternately provide supplementary reasons or supplementary defences, resulting in the delay in completing the procedure, that TIPO cites this rule to terminate the examination of an invalidation action. In order to solve this problem, the new Patent Act stipulates that, when TIPO deems it necessary to notify a petitioner of an invalidation action to state its opinions and the patentee to provide a response or supplementary response, there is a one-month deadline for reply. Unless an extension request is submitted in advance and approved, the comments or response will not be examined if the petitioner or patentee fails to submit comments or provide a response within the specified period.
However, can petitioners of invalidation actions take advantage of the notice from TIPO and present new reasons or evidence that they had been unable to provide previously because they had exceeded the three-month deadline? According to TIPO's Q&A, if a petitioner's new reason or evidence is clearly beyond the scope of TIPO's request of notice and is contrary to the legislative purpose of shortening the examination period, the new reasons or evidence will not be examined.
Remedies for overdue post-grant amendments
With regard to the timing and frequency of post-grant amendments made by patentees in invalidation action procedures, the old Patent Act set no specific limit. It is common for patentees to make multiple post-grant amendments, which delays the examination procedure. The new Patent Act stipulates that patentees can file a request for post-grant amendments during the invalidation proceedings only when providing:
- a response after receiving a notification from TIPO;
- a supplementary response after receiving the evidence or reasons provided by the requester; or
- a response after receiving a notification from TIPO that the post-grant amendment has been rejected.
If a litigation case involving an invention patent is pending and the post-grant amendment is necessary, it is not subject to the abovementioned time limits.
According to the new Patent Act, post-grant amendments proposed by patentees after the expiration date of the abovementioned time limits will not be accepted. However, if patentees submit a response and post-grant amendment at the same time after the expiration date, TIPO will consider only the response submitted by the patentee before the examination (as mentioned in the first point) and the response proposed by the patentee will lose its ground because the post-grant amendments will not be accepted. How should this situation be resolved? According to TIPO's Q&A, examiners should send a notice requesting the patentee to resubmit a reply based on the claim which has not been amended, so that the patentee can consider whether to resubmit the post-grant amendments within the time period.
